Understanding the Likelihood of Confusion Factors in Trademark Law

This blog is a part of my Ultimate Guide to Trademarks. Check it out for more info!

You’re driving down the road when you notice the new shop on the corner has finally opened up. It’s a kosher bakery. The name? Dreidel Joe’s. 

Wow, you think. They must be affiliated with Trader Joe’s. 

Are they? Or aren’t they? Is the average consumer likely to be confused by these names? 

When it comes to trademark infringement, this is the essential question. 

What is a likelihood of confusion, and what does it mean?

The intricate world of trademarks holds nuances that require thorough analysis. One such area is the likelihood of confusion, a crucial consideration in trademark infringement cases. In essence, a likelihood of confusion boils down to whether the average consumer might mistakenly believe that two products or services come from the same source because of their similar trademarks.

Here are the pivotal factors that courts usually consider in a likelihood of confusion analysis:

1. Relation Between Goods and Services

The first prong of the analysis is to consider whether the products or services provided under the marks are related in any way. For instance, hair cutting services and hair products can be deemed related, while hair products and pots and pans are entirely distinct and have no relationship to one another. Such distinctions are crucial in determining if there’s potential for confusion. In our Trader Joe’s example, there could be a relation between Trader Joe’s grocery and Dreidel Joe’s bakery.

2. Competition Between the Goods and Services

Do the goods and services under consideration directly compete with each other? While a hair salon and hair products might compete, steak knives and hair products do not. What about grocery stores and bakeries, like Trader Joe’s and the fictitious Dreidel Joe’s? They could very well be deemed competitive.

3. Similarity of the Marks

This factor considers the sound, appearance, and meaning of the marks at issue. For example, Trader Joe’s and Dreidel Joe’s have the same number of syllables and, when heard quickly in passing or conversation, certainly sound similar. But let’s consider the connotation of these marks. “Dreidel Joe’s” conveys goods or services having to do with Judaism and Hanukkah. It could be a store selling products for the Jewish holidays. Trader Joe’s, on the other hand, connotes a person who buys or sells goods. Dreidel Joe’s could have an argument that the marks are not similar in connotation.

4. Strength of the Marks

Marks on the spectrum from generic to fanciful carry different weights. For instance, a generic term like ‘Hair’ for a hair salon will be afforded little protection. Conversely, an arbitrary name like ‘Sunshine’ for a salon is more distinctive and less descriptive, offering better protection against potential infringements. In our Dreidel Joe’s example, both marks would be deemed strong and distinct in connection with their services.

5. Cost of the Goods

Consumers differentiate products based on price points. A burger from McDonald’s is perceived differently from one at Ruth’s Chris, even if both are hamburgers. This distinction plays into how consumers perceive potential similarities between products. If Dreidel Joe’s and Trader Joe’s offer food products at the same price point, this factor would lean towards a likelihood of confusion.

6. Shared Customer Base

This considers whether the products or services target the same audience. If two products appeal to entirely different demographics, the risk of confusion is minimal. If many of Trader Joe’s Jewish customers would also shop at Dreidel Joe’s, confusion is more likely.

7. Diverse Use of the Mark

If a trademark owner uses his mark for various products or services or intends to do so in the future, it broadens their scope of protection. For instance, if ‘Stanley’ is branded on drinkware, hats, and backpacks, that business has a stronger case against another party using ‘Stanley’ for clothing, even if Stanley hasn’t yet ventured into that category.