What is the test for infringement of a federally registered trademark pursuant to 15 U.S.C. § 1114?

       This legal article is written as an outline regarding the test for infringement of a federally registered trademark pursuant to 15 U.S.C. §  1114.

   A registered trademark is infringed when a person uses it or a phrase similar to it in a manner likely to cause confusion, mistake, or deception among ordinarily prudent buyers or prospective buyers as to the source of the product.  Fed. Jury Practice & Instructions § 159.20.  The test is not one of actual confusion, mistake or deception but rather the likelihood of confusion, mistake or deception.  Fed. Jury Practice & Instructions § 159.20. 

       Anyone who used the mark without consent of the owner in connection with the sale of goods in a manner likely to cause confusion as to the source of the good infringes on that trademark.  15 U.S.C. § 1114(1).  The central inquiry in a trademark infringement case under the Lanham Act and under common law is whether there is a likelihood of confusion.  Yale Electric Corp. v. Robertson, 26 F.2d 972, 973 (2^nd Cir. 1928).    

      In order to prove infringement of a registered trademark, a Plaintiff must show that: (1) its mark is validly registered; (2) use of the mark was unauthorized; and (3) use of the mark is likely to cause confusion in the marketplace.  Gennie Shifter, LLC v. Lokar, Inc., 2010 U.S. Dist. LEXIS 2176, *24 (D. Colo. 2010).  See also, Big O Tires, Inc. v. Bigfoot 4x4, Inc., 167 F. Supp. 2d 1216, 1222 (D. Colo. 2001).

I.                   Prong One: Mark is Registered.

Under the first prong, the federally registered trademark must be valid.  Id. at *26.  The possible reasons a trademark would be invalid will be discussed infra. 

II.                Prong Two: Use of the Mark is Unauthorized.

The second prong of the test is straightforward – if a mark is registered, a party either has the authority to use the mark (under a license or other agreement) or not. 

III.             Prong Three: Likelihood of Confusion.

Whether the use of a mark will result in likelihood of confusion under the Lanham Act is a question of fact.  Gennie Shifter, LLC v. Lokar, Inc. at *29-30 (citing The John Allan Co. v. The Craig Allen Co., LLC, 540 F.3d 1133, 1138 (10^th Cir. 2008)).  Colorado falls within the Tenth Circuit, which has enumerated six factors to consider when addressing the likelihood of confusion regarding a registered mark.  Those six factors are: (1) the degree of similarity between the marks; (2) the intent of the alleged infringer in adopting the mark; (3) evidence of actual confusion; (4) similarity of products and manner of marketing; (5) the degree of care likely to be exercised by purchasers; and (6) the strength or weakness of the marks.  Id. at *30.  See also, King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1090 (10^th Cir. 1999). 

None of the six factors are dispositive, and the final determination must be based on consideration of all relevant factors.  Gennie Shifter, LLC v. Lokar, Inc. at *30.  The plaintiff has the burden of proving the likelihood of confusion.  Id.

A.     Degree of Similarity

Degree of similarity is based on three levels: sight, sound and meaning.  Id. at *31 (citing sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 972 (10^th Cir. 2002)).  See also, Big O Tires, Inc. v. Bigfoot 4x4, Inc. at 1223.  Similarities are weighed more heavily than differences.  Gennie Shifter, LLC v. Lokar, Inc. at *31.  In the case were one feature of a mark is more significant than other features, the Court will give greater force to the dominant feature.  Id.

B.     Intent of Alleged Infringer

If there is intent to derive benefit from a registered mark’s reputation or good will, it weighs heavily in the plaintiff’s favor.  Id. at *32.  If there is no evidence that the defendant intended to derive benefit, then the factor weighs against the likelihood of confusion. 

C.     Actual Confusion

Evidence of actual confusion is not necessary to find a likelihood of confusion, however it is considered the best evidence to establish the third prong of the infringement test.  Id. at *34 (citing The John Allan Co. v. The Craig Allen Co. at 1140).  See also, King of the Mountain Sports, Inc. v. Chrysler Corp. at 1092.

In looking at instances of actual confusion, isolated instances of actual confusion may be de minimis.  Id. (citing Universal Money Centers, Inc. v. American Tel. & Tel. Co., 22 F.3d 1527, 1534 (10^th Cir. 1994)).  De minimis evidence of actual confusion does not establish the existence of the likelihood of confusion.  Id.  In King of the Mountain Sports, Inc., the Court found that seven examples of actual confusion were de minimis and did not show actual confusion.  Id.  In Gennie Shifter, LLC, the Court found that one confused consumer at a trade show, three to four telephone calls a week, and one purchase order containing part numbers of the other company were limited anecdotal evidence of actual confusion and were de minimis.  Gennie Shifter, LLC v. Lokar, Inc. at *36-37.

D.    Similarity of Products and Manner of Marketing

The greater the similarity between the products and services offered by the parties to a lawsuit, the greater the likelihood of confusion.  Id. at *37 (citing Heartsprings, Inc. v. Heartspring, Inc., 143 F.3d 550, 556 (10^th Cir. 1998)).  See also, Big O Tires, Inc. v. Bigfoot 4x4, Inc. at 1224.

For example, in Beer Nuts v. Clover Club Foods Co., each of the parties sold a sweetened salted peanut.  Plaintiff’s product was sold under the name “Beer Nuts” and defendant’s product was sold under the name “Brew Nuts.”  The Tenth Circuit Court of Appeals found that examination of the similarities revealed a likelihood of confusions between the marks.  See generally, Beer Nuts v. Clover Club Foods Co. 805 F.2d 920 (10^th Cir. 1986) (finding that the similarities were great, and the virtual identity of the products and marketing methods supported the likelihood of confusion, even with no proof of actual confusion because the goods were relatively inexpensive and the products were identical).

E.     Degree of Care Likely Exercised by Customers

If a high degree of care is exercised by consumers, then the likelihood of confusion is low.  Gennie Shifter, LLC v. Lokar, Inc. at *39.  Where a product is inexpensive, buyers typically exercise little care in the selection of items because they may be purchased on impulse.  Id. (citing Beer Nuts v. Clover Club Foods Co. at 941)).

F.     Strength of the Registered Mark

Whether a mark is strong or weak will factor into the likelihood of confusion.  A strong trademark is one that is rarely used by parties other than the owner of the trademark, while a weak trademark is one that is often used by other parties. Vail Assocs. v. Vend-Tel-Co., Ltd., 516 F.3d 853, 867 (10^th Cir. 2008).  King of the Mountain Sports, Inc. v. Chrysler Corp. at 1093.  In assessing the strength of a mark, there are two types of strength that are considered by the Court: (1) conceptual strength and (2) commercial strength.  Id.  However, the strength of a plaintiff’s mark cannot outweigh the other factors.  Id.

Conceptual strength is based on the category into which a mark falls.  In order to be protectable, a mark must be capable of distinguishing the products of services it marks from those of others.  Gennie Shifter, LLC v. Lokar, Inc. at *27-28 (citing Donchez v. Coors Brewing Co.¸392 F.3d 1211, 1216 (10^th Cir. 2004)).  The degree of protection is based on the category.  There are five categories a trademark can fall into.  The five categories, in order of increasing strength are: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; and (5) fanciful.  Id. at *28.

A mark is considered to be generic if it is a common description of production or services and refers to the genus of which the particular product or service is a species.  A mark is descriptive if it describes the product’s or service’s features, qualities, or ingredients in ordinary language or describes the use to which the product or service is put.  A mark is suggestive if it merely suggests the features of the product or service, requiring the purchaser to use imagination, thought, and perception to reach a conclusion as to the nature of the goods or services.  An arbitrary mark applies a common word in an unfamiliar way.  A fanciful mark is not a real word at all, but is invented for its use as a mark. 

Gennie Shifter, LLC v. Lokar, Inc. at *28-29 (citing Donchez v. Coors Brewing Co. at 1216).  See also, King of the Mountain Sports, Inc. v. Chrysler Corp. at 1093.

            Commercial strength is based on the marketplace recognition value of the mark.  Id.  The amount of money spent on advertising by the senior user, although not automatically indicative of consumer recognition, is relevant to the analysis.  Big O Tires, Inc. v. Bigfoot 4x4, Inc. at 1227 (citing A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198, 224 (3^rd Cir. 2000)).