Comparing Marks
Jurisdiction | Maryland |
VII. COMPARING MARKS
A. Likelihood of Confusion
The gravamen of trademark infringement is "Likelihood of Confusion" as to the affiliation, connection, association, origin, sponsorship, or approval. The Lanham Act provides two different, but very similar tests: one for marks that are either registered or protected as common law marks,85 and one applicable only to registered marks.86 The discussion below will focus on the more general statute, although the same reasoning is applicable to both sections.
B. Factors/Tests
Each federal circuit has established similar criteria to determine whether a likelihood of confusion exists. The Fourth Circuit has adopted a seven prong test enunciated in Pizzeria Uno Corp. v. Temple87 which focuses the infringement analysis on: (1) the strength or distinctiveness of the marks; (2) the similarity of the marks; (3) the similarity of the goods and services the marks identify; (4) the similarity of the facilities the parties use in their businesses; (5) the similarity of advertising used by the parties; (6) the parties' intent (bad faith); and (7) actual confusion. These "factors are not always weighted equally, and not all factors are relevant in every case."88 In fact, "there is no need for each factor to support [the plaintiff's] position on the likelihood of confusion issue."89 Rather, the confusion factors "are only a guide—a catalog of various considerations that may be relevant in determining the ultimate statutory question of likelihood of confusion."90 Other Fourth Circuit decisions have added two additional factors to the Pizzeria Uno test: (8) the quality of the defendant's product; and (9) the sophistication of the consuming public.91 While no one factor is decisive, three that are very important are strength, bad faith and actual confusion. Although far fewer cases have been tried and decided in Maryland state courts, the Maryland common law adopts the rationale and tests of the Fourth Circuit in determining trademark infringement.92
1. Strength/distinctiveness of marks
The strength of a mark relates to the degree to which the designation is associated by prospective purchasers with a particular source. For a trademark, if the senior user's use is distinctive and unique, and no third party is using a mark that is at all similar, then the prior user has broad and strong protection, particularly if heavily marketed and well known. However, if there are a number of other entities using a similar mark for similar goods or services, then the mark is diluted and is less distinctive and commercially weaker. A trademark that is conceptually strong, such as being arbitrary, fanciful, or suggestive, may still lack the ability to stop infringement if it is not also commercially strong.93
2. Similarity of marks: sight, sound, and meaning
If two marks are not similar, there is little need to continue with the infringement analysis. In comparing two marks, the key test is "sight, sound and meaning." Do the marks seem similar? How are they pronounced, including emphasis on syllables or syncopation? Do they create the same understanding of the words? "Sight" analysis focuses more on the logo or design feature of the mark. When viewing two marks, the test is more of a "commercial impression" understanding of what consumers understand when confronted with one mark, and are exposed to another mark. A side-by-side painstaking analysis of the nuanced differences between two marks is disfavored.94 For the "sound" comparison, consider how consumers hear the marks, and determine whether slight differences in pronunciation really are significant enough to distinguish the marks in the minds of consumers. As with meaning, because the likelihood of confusion test is focused on how the consumer perceives the marks, two brands which are spelled and pronounced differently can still be confusing if they each leave the consumer with the same commercial impression. Thus, if other factors do not weigh too heavily so as to negate a finding of confusion, words such as "quick" and "jiffy" or "summit" and "pinnacle" might be deemed infringing on each other.
Practice Tip
Some people have the notion that by adding a single word, or name, to a mark, the mark can be distinguished from another. Although there are times when adding a word at the beginning or end of a mark is enough to negate the confusion, the situation of the fact pattern dictates. For example. a computer company called "Apples to Zebras" is still confusing with the more famous maker of the iPhone.
3. Similarity of goods/services
The other core factor in determining confusion is whether the offered goods or services are similar to each other, which would give weight to a finding that confusion exists, or if they are sufficiently different so that consumers would not find confusion. For example, the brand DELTA can be used by an airline and a faucet maker without confusion. No one would believe the airline also sold faucets, nor would they believe the fixture company offered air travel. The harder cases come when the goods and services have some relationship, but still are not identical. The more one good can be a substitute for the other or consumers believe they might emanate from the same source, the more weight is given to a finding of confusion.
4. Similarity of facilities: channels of trade
Part of the analysis requires that the same set of consumers have the opportunity to see each of the competing brands. This rationale of analyzing the facilities used by each, or the "channels of trade," focuses on whether the products in question are offered in overlapping conditions. The investigation is whether a consumer is ever in a setting to see the junior user due to where the...
To continue reading
Request your trial