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Likelihood of Confusion Tests - 2nd Circuit

  • zhenggong6
  • Feb 27
  • 2 min read

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

  • The strength of plaintiff’s mark.

  • The degree of similarity between the marks.

  • The proximity of the products.

  • The likelihood that the prior owner will bridge the gap and enter the defendant’s market.

  • Actual confusion.

  • The defendant’s good faith in adopting its mark.

  • The quality of defendant’s product.

  • The sophistication of buyers.

  • (Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961))


Important Considerations

  • The factors are balanced and no single factor is determinative (Lang v. Ret. Living Publ’g Co., 949 F.2d 576, 580 (2d Cir. 1991)).

  • In a case where a mark is shown to be counterfeit and identical to a mark used for directly competing goods, some Second Circuit courts have found infringement based solely on this evidence without considering the other factors (Chanel, Inc. v. Veronique Idea Corp., 795 F. Supp.2d 262, 267 (S.D.N.Y. 2011)).

  • If the marks are sufficiently dissimilar, a court in the Second Circuit may find there is no confusion without examining the other factors (Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 46 (2d Cir. 2000)).

  • The actual intent of the prior mark holder to expand into the accused infringer’s product market (bridge the gap) is only relevant if the intended expansion is known by prospective purchasers (Lang, 949 F.2d at 582).

  • However, the “bridge the gap” factor also could favor the plaintiff if the average consumer would expect plaintiff to enter defendant’s market, regardless of plaintiff’s actual intent (Sports Authority, Inc. v. Prime Hospitality Corp., 89 F.3d 955, 963 (2d Cir. 1996)).

  • An accused infringer’s intentional copying creates a presumption that confusion is likely (Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 258 (2d Cir. 1987)).


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