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Trademark Infringement Comes Down to One Question: Would Buyers Be Confused?

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Trademark infringement is using a name, logo or other mark, without the owner's permission, in a way that's likely to confuse buyers about who makes or stands behind a product or service. The test isn't whether two names are identical, and it isn't whether anyone meant harm. It's whether confusion is likely.

The Supreme Court has called likelihood of confusion the "keystone" of the standard. Here is where it comes from, what courts look at, what falls outside it, and what a court can order.

Where the rule comes from

The federal trademark statute is the Lanham Act, and two sections do most of the work.

15 U.S.C. § 1114 protects registered marks. It makes a person liable to the registrant for using in commerce, without consent, a reproduction, counterfeit, copy or colorable imitation of a registered mark in connection with selling, offering, distributing or advertising goods or services, when that use is likely to cause confusion, to cause mistake, or to deceive.

15 U.S.C. § 1125(a) reaches further. It covers any word, name, symbol or device used in commerce that's likely to cause confusion about affiliation, connection, sponsorship, approval or origin. It doesn't require a registration, which is why the owner of an unregistered mark can sometimes sue too. The Supreme Court has said plainly that registration isn't a prerequisite to an infringement action. How far unregistered rights reach is its own subject, covered in the article on prior users who never registered.

Under either section, the person suing generally has to show a valid mark, rights that came first, and a likelihood of confusion from the other side's use. A registration on the USPTO's Principal Register helps with the first parts: under 15 U.S.C. § 1115(a), it's prima facie evidence that the mark is valid, that the registrant owns it, and that the registrant has the exclusive right to use it for the listed goods or services. The other side can still rebut that.

What courts weigh

There's no single checklist. Federal courts use their own lists of factors. Comparing one appeals court's list with the one the USPTO's trial board uses, the Supreme Court called the factors similar but not identical, and not fundamentally different. The USPTO's summary of what courts consider is a fair picture of the common ground:

  • how similar the marks are
  • whether the goods or services are related enough that buyers might assume one source
  • how the goods or services are advertised, marketed and sold
  • the conditions of purchase and the range of likely buyers
  • any evidence of actual confusion
  • the defendant's intent in adopting the mark
  • the strength of the plaintiff's mark

No factor decides every case, and the weighing changes with the facts. Two points are worth knowing. Marks don't have to be identical to be confusingly similar. They can be similar in sound, appearance, meaning or overall impression, so changing a letter or adding a word doesn't necessarily solve anything. And actual confusion is evidence, not a requirement. The statute asks whether confusion is likely.

What usually isn't infringement

Unrelated goods or services. Trademark rights are tied to what the mark is used for. The USPTO's own examples are Dove for soap and Dove for ice cream bars, and Delta for faucets and Delta for air travel. The same word can generally coexist when buyers wouldn't expect the two businesses to be connected. "Related" is broader than "identical," though: goods can be related because they're used together or sold to the same buyers.

Descriptive fair use. 15 U.S.C. § 1115(b)(4) protects using a term otherwise than as a mark, fairly and in good faith, only to describe your own goods or services or where they come from. If someone registered a descriptive word as a brand, competitors can generally still use that word in its ordinary descriptive sense. The Supreme Court held in KP Permanent Make-Up v. Lasting Impression that a defendant raising this defense has no independent burden to prove the absence of confusion, and that some possibility of consumer confusion is compatible with fair use.

Nominative fair use. This is using someone else's mark to refer to their actual product: a repair shop saying which car brands it services, or a review naming the product reviewed. Courts handle this doctrine in different ways. The best-known version is the Ninth Circuit's test from New Kids on the Block v. News America Publishing: the product isn't readily identifiable without the mark, you use only as much of the mark as reasonably necessary, and you do nothing to suggest sponsorship or endorsement. There's more on the practical side in the article on mentioning other brands in your marketing.

Each of these depends on how the term is actually used.

Counterfeiting and dilution are separate concepts

Counterfeiting is the most serious form of infringement. The Lanham Act defines a counterfeit as a spurious mark that's identical with, or substantially indistinguishable from, a registered mark. Think fake goods carrying the real brand's name, not a similar-sounding competitor.

Dilution is not about confusion at all. Under 15 U.S.C. § 1125(c), the owner of a famous mark can seek an injunction against a use that's likely to blur the mark's distinctiveness or tarnish its reputation, regardless of whether there's confusion, competition or actual economic injury. The catch is "famous." The statute defines that as widely recognized by the general consuming public of the United States as identifying the owner's goods or services. That's a high bar that most marks don't meet, and the statute excludes fair use, including comparative advertising, parody, criticism and commentary, as well as news reporting and noncommercial use.

What a court can order

The usual remedy is an injunction: a court order to stop. Under 15 U.S.C. § 1116, courts can grant injunctions according to the principles of equity, and a plaintiff who proves a violation is entitled to a rebuttable presumption of irreparable harm.

Money is possible too. Under 15 U.S.C. § 1117(a), a successful plaintiff may recover the defendant's profits, its own damages, and the costs of the action. The court can increase a damages award up to three times the actual damages, and can award attorney fees in exceptional cases. A court can also order infringing articles destroyed.

Counterfeiting raises the stakes. For intentional use of a mark known to be counterfeit, § 1117(b) generally calls for three times the profits or damages, whichever is greater, plus attorney fees, unless there are extenuating circumstances. A plaintiff can instead elect statutory damages under § 1117(c): not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services, and up to $2,000,000 if the use was willful.

One limit ties back to notice. Under 15 U.S.C. § 1111, a registrant who doesn't give notice of registration can't recover profits or damages in an infringement suit unless the defendant had actual notice of the registration.

If you're on the receiving end, see the article on cease-and-desist letters. If you're the one who found a lookalike, see the article on someone using your brand name.

If you want to talk about what you're building and where a name stands, you can see how the search and filing packages work on the services page, and the FAQs page answers most of what comes up before a first call.

Book a free 15-minute discovery call with the attorney (opens in a new tab)

(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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