This is a common question that we get from our clients – “How can I tell if my trademark is too similar to someone else’s?”
While this seems like a simple question that should have a straightforward answer, the true analysis involved a multi-factor test where each factor must be evaluated separately, and then after each factor-specific analysis is performed, those analyses must be viewed collectively, or “in the totality of the circumstances.” After the collective analysis, a determination as to whether a “likelihood of confusion exists” can be made.
What factors must be analyzed depends on the specific jurisdiction you are in, and we have actually written about these factors in our local jurisdictions (New York, New Jersey, and at the USPTO) in a previous blog post which can be found here.
For reference here are the factors used at the USPTO, also called the “du Pont” factors:
The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use.
The similarity or dissimilarity of established, likely-to-continue trade channels.
The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.
The fame of the prior mark.
The number and nature of similar marks in use on similar goods.
The nature and extent of any actual confusion.
The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.
The variety of goods on which a mark is or is not used.
The market interface between the applicant and the owner of a prior mark.
The extent to which applicant has a right to exclude others from use of its mark on its goods.
The extent of potential confusion.
Any other established fact probative of the effect of use.
I think it would be helpful to provide an example analysis of these factors, so I have chosen the trademark owned by the band “Justice” compared with Justin Bieber’s new album, “Justice.” In 2021 there was some public dispute between the group and Bieber, which is why this comparison, which is being provided solely for educational purposes, was selected.
Turning to the first factor, the similarity of the marks:
Any member of the public would see that both parties’ use of the word “JUSTICE” features the ‘T’ being highlighted as a cross. Considering that the words are identical, and they have been shown in a stylized form that resemble each other, it is fair to say that a similar “commercial impression” has been generated between these two marks, rending this first factor weighing in favor of a likelihood of confusion (conflict).
The second factor also does not bode well for Bieber. Here we must take a look at the goods/services being offered under each mark and see not if they are identical, merely if they are related. So, while the group Justice uses that mark as their band name while Bieber uses it for his album name, often band names and album names are related (think about how many bands have a self-titled album). For this reason, the second factor also weighs in favor of a likelihood of confusion.
The third factor also weighs in favor of a likelihood of confusion since both Justice and Bieber’s albums are sold in the same stores/available via the same streaming services, the channels of trade are identical here.
As consumption of music isn’t something that is normally carefully considered (certainly when compared to purchases like a new automobile), the impulse nature of consumption of music makes small variations between the two marks unlikely to occur. This also weighs in favor of the marks being too similar.
Finally, the fifth factor is one that weighs against a likelihood of confusion. While I, a big fan of the band Justice, might consider their band name to constitute a “famous” mark, my marketing coordinator had no idea who they were (getting old sucks!) which means that they likely do not qualify as a “famous mark”.
While I don’t know other uses of JUSTICE off the top of my head, we can just punt on the sixth factor for the purposes of this discussion and say that it’s neutral. Same thing with evidence of actual confusion, since I don’t have any evidence of that we can say that factor is neutral. However, if you are performing this analysis in real life and have evidence of actual confusion, that is excellent evidence that there is a conflict!
The remaining factors are all fact-specific so difficult to determine here without taking a deep dive, so we will say these factors are all neutral as well.
Now that we have “analyzed” the various factors individually, we must now consider all of the factors as a whole (in the “totality of the circumstances”) in order to determine if there is a conflict. Considering that all the factors except maybe the fifth factor weigh in favor of a likelihood of confusion, there is likely a conflict between each party’s use of the mark JUSTICE. My guess is that they struck some sort of deal on the side, otherwise there may be a potential lawsuit incoming.
Concerned that you are using something too similar to someone else’s mark? Concerned about someone else using something too similar to your mark? Feel free to reach out to us at MG Miller and we would be happy to chat about your situation with you.