Eric Goldman’s Helpful Hints
To Knowing Your Trademark Terms
Likelihood of Confusion
Ninth Circuit “Sleekcraft” Factors (from the Ninth Circuit Model Civil Jury Instructions 18.15)
1. STRENGTH OR WEAKNESS OF THE PLAINTIFF'S MARK. The more the consuming public recognizes the plaintiff's trademark as an indication of origin of the plaintiff's goods, the more likely it is that consumers would be confused about the source of the defendant's goods if the defendant uses a similar mark.
2.DEFENDANT'S USE OF THE MARK. If the defendant and plaintiff use their trademarks on the same, related, or complementary kinds of goods there may be a greater likelihood of confusion about the source of the goods than otherwise.
3. SIMILARITY OF PLAINTIFF'S AND DEFENDANT'S MARKS. If the overall impression created by the plaintiff's trademark in the marketplace is similar to that created by the defendant's trademark in [appearance] [sound] or [meaning], there is a greater chance [that consumers are likely to be confused by defendant's use of a mark] [of likelihood of confusion]. [Similarities in appearance, sound or meaning weigh more heavily than differences in finding the marks are similar].
4. ACTUAL CONFUSION. If use by the defendant of the plaintiff's trademark has led to instances of actual confusion, this strongly suggests a likelihood of confusion. However actual confusion is not required for a finding of likelihood of confusion. Even if actual confusion did not occur, the defendant's use of the trademark may still be likely to cause confusion, you may conclude that the amount of actual confusion was not substantial. As you consider whether the trademark used by the defendant creates for consumers a likelihood of confusion with the plaintiff’s trademark, you should weigh any instances of actual confusion against the opportunities for such confusion. If the instances of actual confusion have been relatively frequent, you may find that there has been substantial actual confusion. If, by contrast, there is a very large volume of sales, but only a few isolated instances of actual confusion you may find that there has not been substantial actual confusion.
5. DEFENDANT’S INTENT. Knowing use by defendant of the plaintiff's trademark to identify similar goods may strongly show an intent to derive benefit from the reputation of the plaintiff’s mark, suggesting an intent to cause a likelihood of confusion. On the other hand, even in the absence of proof that the defendant acted knowingly, the use of plaintiff's trademark to identify similar goods may indicate a likelihood of confusion.
6. MARKETING/ADVERTISING CHANNELS. If the plaintiff's and defendant's (goods) (services) are likely to be sold in the same or similar stores or outlets, or advertised in similar media, this may increase the likelihood of confusion.
7. PURCHASER’S DEGREE OF CARE. The more sophisticated the potential buyers of the goods or the more costly the goods, the more careful and discriminating the reasonably prudent purchaser exercising ordinary caution may be. They may be less likely to be confused by similarities in the plaintiff's and defendant's trademarks
8. PRODUCT LINE EXPANSION. When the parties' products differ, you may consider how likely the plaintiff is to begin selling the products for which the defendant is using the plaintiff’s trademark. If there is a strong possibility of expanding into the other party’s market, there is a greater likelihood of confusion.
(1) mark is “famous” = “widely recognized by the general
consuming public of the
- advertising/publicity duration/extent/geographic reach
- amount/volume/geographic extent of sales
- actual recognition
(2) defendant used in commerce
(3) defendant’s use began after the mark became famous
- blurring = impairs distinctiveness (factors: mark similarity; level of distinctiveness; degree of exclusivity; level of recognition)
- tarnishment = harms reputation
(1) the domain name is confusing similar (or identical) to a third party’s mark
(2) the registrant has no legitimate interests in the name
But registrant can show legitimate rights by:
- actual or planned bona fide offering of goods/services;
- it is commonly known by the domain name; or
- making a legitimate noncommercial or fair use without intent for commercial gain, misleading diversion of traffic, or dilution.
(3) the name is being used in bad faith:
- acquired the name for profitable resale;
- registered the name to block the legitimate TM owner if a pattern can be shown;
- acquired name to disrupt a competitor; or
- name is intended to attract attention to site by creating a likelihood of confusion.
(1) Domain name registrant registers a domain name containing a third party trademark
(2) has a bad faith intent to profit from the domain name
- the registrant’s IP rights in the domain name
- if the domain name contains the registrant’s real name
- the use of the domain name in a bona fide offering of goods/services
- a bona fide noncommercial or fair use of the domain name
- an intent to divert consumers in a way that harms the trademark owner’s goodwill
- an offer to sell the domain name without having used it for a bona fide offering of goods/services
- providing false contact info
- multiple bogus registrations
- distinctiveness/famousness of the mark
(1) registers, traffics in or uses a domain name that is identical or confusingly similar to the mark or, in the case of a famous mark, dilutes it.