Likelihood of Confusion Tests - 9th Circuit

Introduction

Likelihood of consumer confusion is the core issue in any trademark infringement action under the Lanham Act (15 U.S.C. §§ 1114(1)(a) and 1125(a)(1)). Each federal circuit court applies its own version of the likelihood of confusion test, although many factors overlap.

Likelihood of Confusion Factors

• Strength of the plaintiff’s mark.

• Proximity of the goods.

• Similarity of the marks.

• Evidence of actual confusion.

• Marketing channels used.

• Type of goods and the degree of care likely to be exercised by the purchaser.

• Defendant’s intent in selecting the mark.

• Likelihood of expansion of the product lines.

• (AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979) abrogated in part on other grounds by Mattel, Inc. v. Walking Mountain Prods. 353 F.3d 792 (9th Cir. 2003).)

Important Considerations

• The relative importance of each factor is case specific and the factors are non-exhaustive guides to determine likelihood of confusion (Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1054 (9th Cir. 1999) and Dreamwerks Prod. Group, Inc. v. SKG Studio, 142 F.3d 1127, 1130-32 (9th Cir. 1998)).

• Defendant’s intent to trade on the plaintiff’s reputation can justify an inference of confusing similarity (First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1385 (9th Cir. 1987)).