The cornerstone in trademark infringement litigation has always been determining whether a reasonably prudent consumer in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks. Confusion must be “probable, not simply a possibility”. Over the years the courts have established tests in determining likelihood of confusion. Those factors include: (1) the strength of the mark; (2) proximity of the goods; (3) similarity of the marks determined by the sight, sound and meaning; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product line.
With the expansion of the internet and its effect on commerce, the courts have modified the tests and have re-evaluated the standard for finding likelihood of confusion. In a case called GoTo.com, the court noted that “our ever-growing dependence on the Web may force us eventually to evolve into increasingly sophisticated users of the medium”.
Trademark infringement litigation often turns on the strength of the trademarks. Trademarks are classified along a spectrum of increasing distinctiveness: (1) generic; (2) descriptive; (3) suggestive; and (4) arbitrary or fanciful. [Moose Creek 331 F. Supp. 2nd at 1222]. Generic and descriptive are deemed weak while arbitrary marks are considered strong. However even strong marks will be deemed weak if they exist in a crowded field of similar marks.
As stated by a leading authority and supported by case law: “A mark that is hemmed in on all sides by similar marks on similar goods cannot be very “distinctive”. It is merely one of a crowd of marks. In such a crowd, customers will not likely be confused between any two of the crowd and may have learned to carefully pick out one from the other.”