To Prevail on a Trademark or Unfair Competition Claim There Must Be a Likelihood of Confusion

David R. Bohm

By David R. Bohm

Part of a series on issues related to Manufacturers, Distributors and International Trade

In order to prevail on a claim of trademark infringement under the Lanham Act (the federal trademark law), a common law claim of trademark infringement, or a claim of unfair competition, a plaintiff is required to show that the infringing use be “likely to cause confusion or to cause mistake.” 15 U.S.C. § 1114(a).

In Sensient Technologies Corp. v. Sensory Effects Flavor Co., 636 F.Supp.2d 891, 899 (E.D.Mo. 2009), the Court set out determine whether such a likelihood of confusion existed. To make the determination, the Court

“… [considered] six nonexclusive factors.” Everest Capital Ltd. V. Everest Funds Management, LLC, 39 F.3d 755, 759 (8th Cir. 2005). These factors are:

“(1) the strength of the owner’s mark; (2) the similarity of the owner’s mark and the alleged infringer’s mark; (3) the degree of competition between the products; (4) the alleged infringer’s intent to ‘pass off’ its goods as the trademark owner’s; (5) incidents of actual confusion; and (6) the type of product, its cost, and conditions of purchase.”

Luigino’s Inc. v. Stouffer Corp., 170 F.3d 827, 830 (8th Cir. 1999).

Step One in the determination of a claim of trademark infringement involves the strength of the owner’s mark. If a mark is generic, it is entitled to no protection. If the mark is descriptive (which is the weakest category of protectable marks), it is only entitled to protection where the mark has developed secondary meaning; i.e., where the mark is widely recognized as identifying the source of the goods.

A generic term can never function as a trademark because it refers to the common name or nature of the article. Id. A generic term does not identify the source of a product, but rather indicates the basic nature of the product. See id…. “Because a generic term denotes the thing itself, it cannot be appropriated by one party from the public domain….” Likewise, descriptive terms are generally not protectable because they are needed to describe all goods of a similar nature. Such a term describes the ingredients, characteristics, qualities, or other features of the product…to be afforded protection, then, a descriptive term must be so associated with the product that it becomes a designation of the source rather than a characteristic of the product. Schwan’s IP, LLC v. Kraft Pizza Co., 460 F.3d 971, 974 (8th Cir. 2006).


“A strong and distinctive trademark is entitled to greater protection than a weak or commonplace one.” SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091. (8th Cir. 1980).

Strong marks are those that are suggestive, fanciful or arbitrary, with the last classification (essentially made up words) being the strongest.

Step Two involves comparing the marks to determine if they are similar. The less similar the marks, the less the likelihood of confusion.

Step Three is to compare the products or services being offered under the mark to determine if they are competitive. Some of the questions asked in determining whether products are services are competitive include: Are they used for the same purpose? Are they marketed through the same channels of trade?

Step Four, asking what the alleged infringer’s intent is, is often highly subjective. Unless the alleged infringer is trying to counterfeit the products sold under the mark by the complaining party, in which case the intent to pass off as the goods of another is obvious, it is often difficult to determine whether the infringer intended confusion. To the extent the alleged infringer has tried to distinguish his goods or services from that of the complaining party, this factor is usually found to weigh in the alleged infringer’s favor.

As regards Step Five, one or two instances of actual initial confusion are unlikely to be enough to swing the pendulum in favor of the complaining party. This is particularly true where the customer for the product or services is a sophisticated consumer (i.e., where the product or service is expensive, particularly in a business-to-business transaction). In fact, the Eighth Circuit has not, at least so far, adopted the initial interest doctrine, stating in Sensient Technologies Corp. v. SensoryEffects Flavor Co., 613 F.3d 754, 766 (8th Cir. 2010) cert. denied, 131 S. Ct. 1603, 179 L. Ed. 2d 500 (U.S. 2011):

We decline Sensient’s invitation to adopt the “initial interest confusion” doctrine in this case because, even if the doctrine applied generally in this circuit, it would not apply in this case. Under the doctrine, courts look to factors such as product relatedness and the level of care exercised by customers to determine whether initial interest confusion exists. Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270, 296 (3d Cir.2001). Here, although the products are similar, the parties agree the customers are sophisticated and exercise a relatively high degree of care in making their purchasing decisions. This sophistication makes it less likely customers will experience initial confusion, ultimately resulting in a benefit to the alleged infringer. Id. at 296–97. As a result, the district court correctly rejected the application of the doctrine under these facts.

… (E)ven several isolated incidents of actual confusion that occur initially upon the creation of a potentially confusing mark are insufficient to establish a genuine issue of material fact as to the likelihood of confusion. [Duluth News-Tribune, 84 F.3d at 1098].

Finally, Courts look at the type of product, its cost, and the method of sale in weighing likelihood of confusion. The more complex the product, the higher the cost, and the more interaction between the seller and purchaser prior to a sale being consummated, the less likely a court is to find likelihood of confusion.

Posted by Attorney David R. Bohm. Bohm is an experienced litigator working with health care, government, and business clients on employment, intellectual property, and complex contract issues. He is also skilled in alternative dispute resolution as a means to solve disagreements without litigation.

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