Define Trademark Issue 2(d) – Likelihood of Confusion

With Trademark Issue 2(d) – Likelihood of Confusion, the owner of a particular trademark is the only one allowed to use it. If someone else uses the trademark – or something that looks similar – this person will be prohibited by law from continuing to use it if there is a “likelihood of confusion”: i.e. based on the use of this trademark, consumers would probably assume that the two brands are affiliated. It would be unfair to allow people to profit from the goodwill that someone has worked hard to achieve. “Likelihood of confusion” is the third of three elements that someone must prove if they are suing on the basis of trademark infringement under the Trademark Act. The first two elements are that: (1) there is a valid trademark that is protected by law; and that (2) that this person owns that particular trademark.

“Likelihood of Confusion” Trademark Issue 2(d),  is a trademark legal term meaning based on the use of this trademark, consumers would probably assume that the two brands are affiliated.”

To prove that someone is using your trademark and that that there is a “likelihood of confusion”, you first have to show that this person is actually using your trademark (or something that resembles it). As an example, a pop-up ad appearing when someone is reading about your product may make someone wonder if your brand is related to the brand advertised in the pop-up; but if it doesn’t display your trademark or something that looks like it, your trademark is not technically being used. Since the Trademark Act is federal, you would also have to prove that this person is using your trademark in the context of interstate trade, e.g. any marketing in different states.

As for “likelihood of confusion” specifically, the court can look at a number of factors, one of which is whether the two brands or items are directly competing against each other – e.g. two types of soda; if they are part of different markets – e.g. one is a soda and the other is an appliance, they wouldn’t affect each other’s sales. If the two items aren’t part of the same market, the courts will look at whether one of the parties plans to expand into the other’s market. Other considerations include: how distinctive your trademark is; how much the other mark looks like yours; whether the other mark has actually confused people; and how both parties have been marketing their products.

There are a number of defenses open to the person being sued, including “equitable” ones. A lawyer will be able to advise you what doctrines apply to the case. In terms of intellectual property law, the defenses of “fair use” or “collateral use” are available. “Fair use” is when you use a trademark in a way that is unrelated to affecting sales – for example, if you are critiquing a subject and refer to something that happens to have a trademark. “Collateral use” is when the item that is trademarked is part of a more complex product. Again, you need to consult with a lawyer to get more information on defenses and to see what arguments either side can use.

For people marketing their items commercially, it is important to double check that there is nothing in the appearance, packaging, logo, etc. that looks like someone else’s trademark, so that consumers are not led to believe that the items are somehow related or connected to someone else’s trademarked brand. The party owning a trademark is the only one allowed to use it; anyone else could be ordered by a court to stop using the mark or to pay the trademark owner part of the profits made by using the trademark.