"Likelihood of Consumer Confusion" – The Heart of Trademark Infringement Lawsuit (Authored by Faruki Law Clerk Damini Mohan)

consumerconfusion_dmohanWe encounter numerous trademarks each day.  The breakfast cereal we consume, the shampoo or perfume we use, the soda we drink on a hot summer day, the hotel we book for a holiday.  All these products and services are marketed to the consumers using a trademark which helps the consumer identify the source of the product or service.  The law recognizes that consumers make mental associations between the trademark and the source of product or service they purchase.  "The protection of trade-marks is a law's recognition of the psychological function of symbols."  Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 205 (1942).

Haven't most of us at least have had one incident when we purchased a product that is a look-alike or almost similar to the product, we thought we were purchasing only later to realize that it is not the same?

The trademark right not only provides the owner with the right to use it and prevent others from using it, but also benefits the consumer by aiding the consumer in finding the products or services that they previously liked.

Because trademark law is focused on accurate identification of goods and services by the consumer, to succeed in a claim of infringement, the trademark owner must show "likelihood of consumer confusion."  Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).  Courts use several different factors to determine the likelihood of consumer confusion.  These factors are also known as "Polaroid factors," which were first articulated by the Second Circuit.  The Polaroid factors are intended as a guide and the factors are given different weightage based on the facts of the case.  The federal courts in different circuits have adopted a variation of these factors.  For example, the "Frisch factors" is the Sixth Circuit's equivalent of the Polaroid factors that helps courts decide whether the products and marks are similar enough to raise an issue of likelihood of consumer confusion.  Sunless, Inc. v. Palm Beach Tan, Inc., 33 F.4th 866 (6th Cir. 2022).

The Polaroid factors are:

  1. Strength of the senior user's mark (the stronger or more distinctive the senior user's mark, the more likely the confusion);
  2. Similarity of the marks (the more similarity between the two marks, the more likely the confusion);
  3. Similarity of the products or services (the more that the senior and junior user's goods or services are related, the more likely the confusion);
  4. Likelihood that the senior user will bridge the gap (if it is probable that the senior user will expand into the junior user's product area, the more likely there will be confusion);
  5. The junior user's intent in adopting the mark (if the junior user adopted the mark in bad faith, confusion is more likely);
  6. Evidence of actual confusion (proof of consumer confusion is not required, but when the trademark owner can show that the average reasonably prudent consumer is confused, it is powerful evidence of infringement);
  7. Sophistication of the buyers (the less sophisticated the purchaser, the more likely the confusion);
  8. Quality of the junior user's products or services (in some cases, the lesser the quality of the junior user's goods, the more harm is likely from consumer confusion).

In a case involving directly competing products and marks using the same word, the Second Circuit found that the similarity of the marks and the bad faith on the part of the accused infringer weighed in favor of finding infringement. Car-Freshner Corp. v. American Covers, LLC, 980 F.3d 314 (2d Cir. 2020).

The factors are to be weighed against each other, with no factor being automatically determinative. Car-Freshner, 980 F.3d at 334. Also, there need not be evidence on every factor:  for instance, the plaintiff need not set forth evidence of actual confusion to show the likelihood of consumer confusion, although "actual confusion in the marketplace is often considered the best evidence of likelihood of confusion."  Universal Money Ctrs., Inc. v AT&T, 22 F.3d 1527, 1534 (1994).  However, "isolated instances of actual confusion may be de minimis." Id at 1535.  Plaintiffs often use evidence such as emails from consumers and consumer survey reports to show actual confusion.

When a party brings an action for trademark infringement, the above factors aid the court in determining whether the allegedly infringing mark associated with a product or service causes consumer to mistakenly believe that they come from the same source as that of the product or service of the trademark owner.  To summarize, the Polaroid factors help the court decide whether an ordinary prudent person as a consumer in the marketplace would confuse one brand's product or service for another's.  In other words, trademark law ensures that a consumer looking for running shoes doesn't bring home "adigas" instead of "adidas."

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