In a trademark action, the court considers whether one’s use of the trademark creates a likelihood of confusion with an already existing trademark.
Lower courts generally assess the likelihood by considering multiple factors such as: the similarity of the marks in their entireties, such as appearance, sound and connotation; the similarity in the goods or services the marks represent; the similarity of the trade channels; the circumstances and the buyers in the sale of the products; popularity of the existing mark; the number and nature of similar marks used for similar goods or services; the extent of any actual confusion; and the intention of the party owning a newer mark.
The standards for determining whether a trademark creates a likelihood of confusion are inconsistent among the circuit courts, especially with regard to whether the standard is a question of law or a question of fact. In Giant Food, Inc. v. Nation's Foodservice, Inc., the Federal Circuit held that the issue of likelihood of confusion was a question of law, but the majority of the federal circuits continue to define the issue as a question of fact. Many circuits apply a strict interpretation of the “clearly erroneous” doctrine, which requires that upon review of all the evidence, the court firmly believes that a mistake has been committed. Defining the standard as a question of fact also puts the burden of persuasion on the appellant to show that the lower court clearly erred.
[Last updated in June of 2020 by the Wex Definitions Team]