Trademark Infringement

Likelihood of Confusion and the Polaroid Factors

Source of Law for Trademark Infringement

Infringement, 15 U.S.C.A. 1114(1)

Any person who shall, without consent, use in commerce any reproduced, counterfeit, copied, or colorably imitated registered mark in connection with the sale, offer for sale, distribution, or advertising of any goods or services where such use is likely to cause confusion, mistake, or deception shall be liable in civil action for certain remedies that depend upon knowledge of the likelihood of confusion

Defining Likelihood of Confusion

Likelihood
Between a bare possibility and actual confusion For equity purposes for the parties carrying burdens of proof, neither end of the spectrum is used to define likelihood

Confusion
Three types of confusion
source or origin of the goods or services sponsorship, approval or affiliation of the producer of goods or services, 1125(a)(1)(A) post-sale confusion

Mistake in purchasing decision v. general confusion

The Likelihood of Confusion Test and the Polaroid Factors

Produces a fact dependent analysis

No single factor is determinative

Because the question of infringement is a mixture of law and fact, the factual findings are made by the fact finder with a clear error review, but the ultimate determination of likelihood of confusion is a matter of law subject to de novo review
The test and factors consider three inquiries
marketplace sensitivity or reality evidence of confusion intent of the alleged infringer

Polaroid Factors and the Three Categories of Inquiry

Likelihood of Confusion

Marketplace Reality
Strength Mark Similarity Product Similarity Channels of Trade Ads and Promotion Nature of Customers

Evidence of Actual Confusion

Intent or Bad Faith

Factors Described
Strength of Mark Position in Distinctiveness Spectrum Third Party Use Secondary Meaning Similarity of Mark Similarity b/w respective marks Similar sound, appearance, meaning Measure similarity in the context of the marketplace Overall commercial impression of mark on the ordinary consumer Channels of Trade Ads and Promotions Similar methods of distribution Convergence in ad methods or Sales to consumers, department, media or institutions Potential that promotion of Target market considerations conflicting TMs is likely to Nature of Distribution channels reach the same audience Intent or Bad Faith Intent to adopt allegedly infringing mark No intent to trade on s good will + innocent adoption = GF Knowledge of s mark + intent to trade on goodwill = BF Actual Confusion Best evidence of likelihood of confusion Examples: misdirected letters or telephone calls, survey confusion Similarity of Product Use of competing products together Bridging the Gap, i.e., evidence that expansion of product lines will cause the two product lines to intersect Nature of Customers Focus on the ordinary, usual customer Typical buyer exercising ordinary caution Typical customer wealth and sophistication