—Randall Hull, The Br@nd Ranch®
The intent of trademark law is fairly simple – avoid confusing consumers with brands, names, trademarks, packaging, and even domain names, which are so similar, consumers cannot determine the origin of the goods or services. In short, make sure what you are planning to use is not confusingly similar to an existing trademark.
It is fundamental that marketing professionals should understand this, but judging by the number of lawsuits over trademark infringement, this basic concept seems to be overlooked in the brand development process.
In the United States, each Circuit Court utilizes similar multi-factor tests in determining the "likelihood of confusion" which can be instructive to marketing professionals in developing unique and protectable brands and brand elements. There are two I have chosen to use as guidelines – the du Pont Factors and Sleekcraft Factors.
There are thirteen du Pont Factors derived from In re E. I. du Pont de Nemours & Co. (In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973)) which are used by the Federal Circuit, Trademark Examiners, and the Trademark Trial and Appeal Board of the Patent and Trademark Office. For sake of this post I have condensed the factors. A full listing can be found here and a good explanation of each can be found here.
- Similarity of marks in appearance, sound, connotation, and commercial impression;
- Similarity of the goods;
- Similarity of trade channels;
- Conditions under which sales are made and sophistication of buyers;
- Fame of prior mark;
- Number and nature of similar marks on similar goods;
- Actual confusion;
- Length of time of concurrent use without actual confusion;
- Variety of goods on which a mark is used;
- Market interface between applicant and owner of prior mark;
- Extent to which applicant can exclude others;
- Extent of potential confusion;
- Any other fact.
There are eight Sleekcraft Factors that arose from a case entitled AMF Inc. v. Sleekcraft Boats (AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-349 (9th Cir. 1979)) and are used by the U.S. Court of Appeals for the Ninth Circuit. A good summary of the case can be found here, the full case text here, and a full explanation of each factor here.
- Strength of the mark;
- Use of the mark;
- Similarity of the marks;
- Actual Confusion;
- Intent in choosing the mark;
- Marketing/Advertising Channels;
- Purchaser’s Degree Of Care;
- Product Line Expansion.
Although the courts consider all of the factors in either Du Pont or Sleekcraft the factors are not rigid and some may be seen as more important than others. However, for the purposes of a development checklist, use them with equal value.
For easy reference, keep these factors – or others of your choice – at hand and provide them to whomever you think will benefit from their guidance. By combining legal concepts in the development process marketers are more likely to create strong, unique brands and branding elements, and not waste precious resources sorting out confusion in the marketplace.