Confusion and Trademark Liability

© Ray Gradale, Esq.
Recently, the popular social networking site Facebook has filed suit against a new dating network,, citing a likelihood of consumer confusion between the two trademarks. Facebook has alleged that Shagbook is attempting to trade off the pervasive fame of Facebook.

Originally, Trademark Law was mostly concerned with protecting the owner of the mark. Courts would determine whether a mark owner was injured by the diversion of its customers, sales and profits due to another’s infringing mark. If the trademark owner could not prove such damages, such suits would be dismissed even if actual public confusion was present.

Today, courts and the US Patents and Trademark Office (USPTO) have expanded on the one-dimensional profit-driven analysis. With the passage of the Lanham Act, once a mark is valid and legally protectable, Section 32 protects it from confusingly similar marks. This protection is provided via an analysis of certain set factors used to determine likelihood of confusion.

The Factors behind Determining Trademark Confusion

While the analysis behind determining trademark confusion varies by state, the main factors normally include: (1) trademark strength; (2) evidence of actual confusion; (3) intent to confuse; and (4) market factors. Court’s will typically examine and weigh these factors against each other before determining whether there is sufficient evidence of likely consumer confusion:

a. Trademark Strength

One of the most important considerations in any confusion-based trademark case involves the strength of the mark in question. If consumers widely recognize a mark as an indication of the origin of certain goods, there is a high likelihood of confusion if another party uses a similar mark.

If a trademark is fancy or arbitrary, it will normally be easier to prove a competitor copied the mark. However, if a trademark is generic sounding or merely descriptive of a product, it will be easier for a competitor to claim any confusion is coincidental or the result of a weak original trademark. A mark that is not inherently distinctive (or has not acquired distinctiveness) will be therefore be treated less favorably by the court.

Thus, in practice, naming your new brewery “Beer, Inc.” is not going to get much sympathy in court or with the USPTO when a competitor introduces a confusingly similar trademark in your market. In much the same way, the owners of Shagbook have argued that Facebook is too generic a name to deserve trademark protection. The courts will need to decide whether Facebook was an inherently distinctive trademark, or that it has acquired distinctiveness.

b. Evidence of Actual Confusion

Unsurprisingly, any evidence of actual confusion will be self-evident of the likelihood of confusion. Therefore, while actual confusion is not necessary to prove infringement, it remains a particularly relevant factor and will be necessary to receive damages. Surveying consumers is a popular way to show actual confusion. Should consumers believe that Shagbook is part of the Facebook social network, courts might be swayed toward finding trademark infringement has occurred.

The sophistication of the customer and their degree of care are also factors in determining actual confusion. Professional buyers with a high degree of training are less likely to be confused than a retail customer running a quick errand or perhaps a social internet surfer. Cost of the product will be examined as well, since more expensive products are likely to rouse a higher degree of customer scrutiny than inexpensive or free products.

c. Intent to Confuse

If trademark owners such as Shagbook knowingly used a confusingly similar mark to identify their goods, this demonstrates intent to profit off of the goodwill of others via likely confusion. Nonetheless, even if there was no intent whatsoever to use a confusingly similar mark, infringement may still be found due to actual confusion.

d. Market Factors

Finally, the proximity of products – or the likelihood of a future bridging of any gap in proximity between the products – also weighs heavily on the likelihood of confusion. If one company is selling beer and another sells shoes, a market factor analysis will be unlikely to uncover a likelihood of confusion between the similar trademarks. In such a case, not only are the markets separate, but it is improbable that they will ever be bridged. However, should both parties be involved in forms of online social networking, as with Facebook and Shagbook, courts will be more apt to find a likelihood of confusion.

Why Focus on Consumer Confusion?

While trademark law has shifted focus from protecting the trademark owner to protecting the customer, both proprietor and customer benefit nonetheless. Preventing the likelihood of confusion allows customers to quickly and consistently locate their preferred brands, thereby allowing trademark owners to profit from the goodwill of their superior product.

While courts have the consumer’s interest in mind when determining the merits of suits like the one brought by against Shagbook, the Facebook brand stands to benefit from a less confusing marketplace just as much as its customers. Ultimately, no matter the focus of trademark law, trademark owners should strive for a strong mark and equally strong legal protection of that mark.

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