Why “Confusingly Similar” is So Confusing

When a company wants to sue another company for trademark infringement, they will most likely have to prove the defendant’s branding or products are confusingly similar to their own branding or products. So what does it mean to be confusingly similar? If only a few people are confused by the branding, does that count? While there is some grey area in this matter, the court does use an eight point test to see if the offense qualifies as confusingly similar.

What Does Confusingly Similar Mean?

This eight point test is based on a 1961 case known as Polaroid Corp. v. Polarad Elecs. Corp. The courts don’t always use all eight points in every case, because sometimes only six apply.

  1. Strength of Plaintiff’s Mark– The plaintiff needs to prove that they have a “strong mark.” This means they have wide use of the mark in sales and advertising, giving the mark secondary meaning.
  2. Similarity of the Marks– For the court to rule in favor of the plaintiff, the marks in question need to be similar in appearance, sound, connotation, and commercial impression. The way the courts interpret this will vary from case to case. Generally speaking, if a reasonable consumer would find the two marks similar, the court will also find the marks similar.
  3. Relatedness of Products– Similar to point two, this point is geared toward products in the same industry. For example, a landscaping company could probably get away with calling themselves Folgers Landscaping because landscaping has nothing to do with coffee. Thus a reasonable consumer would not think the coffee company owns the landscaping company. However, an energy drink company would most likely not be able to use Folgers in their name, because people might think the coffee company was branching out into energy drinks.
  4. Plaintiff’s Possible Expansion– Even if the plaintiff isn’t currently in the defendant’s market, the court will see if the plaintiff might expand into the defendant’s market in the near future.
  5. Degree of Care Exercised by the Consumer– Consumers will pay more attention to details when making expensive purchases and less attention with cheap everyday purchases. The courts takes these consumer tendencies into account by being more lenient with cases involving expensive products and really scrutinizing cases involving everyday purchases.
  6. Intent of Defendant– If the defendant showed clear malicious intent to deceive consumers or damage the plaintiff’s brand, the court will almost always rule in favor of the plaintiff.
  7. Actual Confusion– In some cases plaintiffs will do surveys or look for evidence of consumer confusion such as reviews or social media posts. This isn’t needed to win a case, but it does help a lot.
  8. Quality of Defendant’s Product– When the defendant clearly has an inferior good or service; the court may see that as inflicting harm on the plaintiff’s brand.

As you can see these eight points are somewhat open for interpretation of the court, which is why this matter is so confusing. If you’re confused by all of this, and need help defending your trademark, call Parsons & Goltry.

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