Composite trademarks: deconstructing the similarity of marks element in a trademark infringement action: what really creates a likelihood of confusion?

• Author: Nelson, James D.

THE analytical inquiry underlying the similarity of marks assessment in a trademark infringement action involves numerous considerations. This analysis is complicated when comparing marks that include distinct, multiple words, and/or graphics, commonly referred to as composite trademarks. This article discusses the considerations involved in determining whether two composite marks are sufficiently similar to support a likelihood of confusion claim.

The gravamen of a trademark infringement claim is the likelihood of confusion between two marks. The Ninth Circuit devised eight nonexclusive factors for courts to consider when determining whether a likelihood of confusion exists: (1) the strength of the mark; (2) the similarity of the marks; (3) the proximity of the goods or services; (4) the intent of the accused; (5) evidence of actual confusion; (6) the marketing channels used; (7) the likelihood of expansion into other markets; and (8) the degree of care purchasers are likely to exercise. (1)

Similarity of Marks Analysis

Under the eight factor test, the second factor in the likelihood of confusion analysis requires courts to evaluate the similarity of the marks. In so doing, courts evaluate the similarity of the marks as they are encountered in the marketplace and the similarity of the dominant components of the marks.

The independent components of trademarks cannot be isolated or evaluated separately, but must be considered and compared in the context in which the marks are encountered in the marketplace, taking into account the circumstances surrounding the purchase of the goods. For example, in Walt Disney Productions v. Air Pirates, the Ninth Circuit concluded that very little likelihood of confusion in the marketplace existed where a Disney trademark was used in adult comic books because the defendants' imitation mark appeared only in the middle of defendants' comic books that were sold in adult, counter-culture stores. (2) In light of the market where the comic books were sold, the Court found no infringement.

In Alpha Industries, Inc. v. Alpha Steel Tube & Shapes, Inc., the court found no likelihood of confusion in the marketplace between appellants' use of the "ALPHA" mark and appellee's use of the "ALPHA" mark in conjunction with other words (steel, tube, shapes). The Ninth Circuit held that: 1) appellant used the "ALPHA" mark alone in a distinctive logo whereas appellee used the "ALPHA" mark in conjunction with other words; 2) the other words were significant and indicated a different origin; 3) the words were not descriptive; and, 4) the purchasers of the goods were knowledgeable, sophisticated, specialists in their areas. (3)

Moreover, where products in the marketplace are virtually identical, the degree of similarity in the marks necessary to support a finding of infringement is less than in the case of dissimilar, non-competing products. In Eaton Allen Corporation v. Paco Impressions Corporation, the court denied the defendant's summary judgment motion. In that case, the court found trademark infringement where both parties manufactured coated paper for correcting typing errors, and the products in the marketplace were virtually identical, potentially creating the false impression that defendant's mark was a "family mark" of plaintiff's product. (4)

In addition to assessing marks as they are encountered in the marketplace, a court must determine whether the over-all presentations of sound, appearance, or meaning of the two marks lead the purchasing public to believe that the two products emanated from the same source. In EA Engineering, Science, and Technology, Inc. v. Environmental Audit, Inc., the district court compared the marks "EA" and "EAI" with the corporate name and found the marks to be 1) visually distinct because of the addition of the corporate name, and 2) aurally distinct because one contains an "I" as well as the corporate name. (5) In Yard-Man, Inc. v. Savage Arms Corporation, the appellant contended that its mark was "well established, unique, and of great value ... [and] urge[d] recognition of the asserted fact that appellee, a late-comer, ha[d] appropriated the essential portion of that mark by the mere addition of another word or feature." (6) The court disagreed, reasoning that the "YARD-MAN" mark and the "SAVAGE YARD CHIEF" mark were aurally distinct; the eye-catching design of an Indian associated with the "SAVAGE YARD CHIEF" mark was visually distinct; and the dominant word "SAVAGE" had a direct reference to the design or corporate name, not the "YARD-MAN" mark. (7)

Composite marks add an additional level of complexity to a similarity of marks assessment. A composite mark may consist of a word or words combined with a design or designs; it may consist solely of words, when there are separable word elements; or it may consist of separable design...