The legal test to determine trademark infringement relies on two elements:
1. The trademarks are entitled to trademark protection (that is, the trademarks are validly registered and are active); and
2. The allegedly infringing use of the trademark is likely to cause consumer confusion.
Let’s hone in on that second, more interesting point. How do the courts determine “likelihood of confusion?” Simple – they utilize the Sleekcraft factors.
The Sleekcraft factors are:
Strength of the marks: The stronger a mark (that is, the more “distinctive” the mark is), the more likely it is to be remembered and associated by the public with the source of the goods or services. These stronger marks provide stronger protection for its respective goods or services.
Relatedness of the goods: Relatedness refers to how close the goods or services are to one another with respect to their use in the marketplace (for example, if the trademarks are both in the category of sporting goods or clothing). The more related the goods or services are, the greater the likelihood of confusion as to the source of the goods or services.
Similarity of the marks: The more similar the marks, the higher the likelihood of confusion. This should be obvious – an example is “SkiJumpz” and “SkJumps” for Ski gear (these examples are intended to be fictitious and are not intended to cover actual registered trademarks or common law marks).
Evidence of actual confusion: Any evidence of actual confusion between the marks can be a strong indicator of the likelihood of confusion (for example, evidence produced through a thoroughly conducted survey).
Marketing channels: The types of marketing channels used, such as the Internet or print advertisements, can contribute to the likelihood of confusion.
Degree of consumer care: The degree of care that is likely to be exercised by the consumer affects the likelihood of confusion. For example, the degree of care might include the amount of thought a consumer would put into a luxury purchase versus an ordinary purchase for a good in the same product category (such as clothing).
The Defendant’s intent: The defendant’s intent in selecting the mark can be a factor, but should not be considered on its own but rather in conjunction with the other factors.
The likelihood of expansion by the trademark holder: A “strong possibility” that either party may expand its business to compete with the other weighs in favor of finding that a current use of a mark is infringing. However, when the two companies are direct competitors, this factor is unimportant.
It’s important to remember that these are factors and not elements. This means that a varying amount of weight can be placed on one or more of these factors depending on its relevance and the strength of the argument you make to show that an infringing use is causing a likelihood of confusion as to the source of the goods or services covered under the trademark.