FORT LAUDERDALE BUSINESS LITIGATION: DETERMINING THE LIKELIHOOD OF CONFUSION IN TRADEMARK INFRINGEMENT CASES

The Lanham Act is a federal statute that protects businesses from various types of unfair competition, including trademark infringement. In business litigation, the Lanham Act permits trademark owners to sue other businesses or individuals for violating their trademark rights. To prevail on a claim of trademark infringement, a plaintiff must show: (1) that its marks were entitled to protection, and (2) that the defendant used marks that were either identical with the plaintiff’s marks, or so similar that they were likely to confuse consumers. The “likelihood of confusion occurs when a later user uses a trade-name in a manner which is likely to cause confusion among ordinarily prudent purchasers or prospective purchasers as to the source of the product.” Wreal, LLC v. Amazon.com, Inc., 38 F.4th 114 (11th Cir. 2022). In business litigation, the issue of whether a likelihood of confusion exists is typically a question of fact. Peter Mavrick is a Fort Lauderdale business litigation attorney, and represents clients in Miami, Boca Raton, and Palm Beach. The Mavrick Law Firm represents clients in breach of contract litigation, non-compete agreement litigation, trade secret litigation, trademark infringement litigation, employment litigation, and other legal disputes in federal and state courts and in arbitration.

Courts must consider the following factors when determining whether a likelihood of confusion exists with respect to the use of a trade mark:

• distinctiveness of the mark alleged to have been infringed;
• similarity of the infringed and infringing marks;
• similarity between the goods or services offered under the two marks;
• similarity of the actual sales methods used by the two parties, such as their sales outlets and customer base;
• similarity of advertising methods;
• intent of the alleged infringer to misappropriate the proprietor’s good will; and
• existence and extent of actual confusion in the consuming public.

Courts within the Eleventh Circuit Court of Appeals must consider each of these factors. However, the “issue of likelihood of confusion is not determined by merely analyzing whether a majority of the subsidiary factors indicates that such a likelihood exists. Rather, a court must evaluate the weight to be accorded the individual factors and then make its ultimate decision.” AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th Cir. 1986). “The appropriate weight to be given to each of these factors varies with the circumstances of the case.” a court, however, is “required to consider each of the seven factors.” Welding Servs., Inc. v. Forman, 509 F.3d 1351 (11th Cir. 2007).

To determine the distinctiveness of a mark, the Court only focuses on the conceptual strength of the plaintiff’s mark. Frehling Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330 (11th Cir. 1999). “This is because in a forward-confusion case, the plaintiff’s theory is that the defendant—a newer user of the mark at issue—is attempting to profit off the plaintiff’s goodwill and reputation.” For the second factor, in “evaluating the similarity of marks, [Courts] must consider the overall impression created by the marks, including a comparison of the appearance, sound and meaning of the marks, as well as the manner in which they are displayed.” E. Remy Martin & Co., S.A. v. Shaw-Ross Int’l Imps., Inc., 756 F.2d 1525 (11th Cir. 1985). Indeed, similarity in any of the elements of appearance, sound, connotation, or commercial impression may be sufficient to find the marks similar.

An analysis of the similarity of the products “requires a determination as to whether the products are the kind that the public attributes to a single source, not whether or not the purchasing public can readily distinguish between the products of the respective parties.” Wreal, LLC v. Amazon.com, Inc., 38 F.4th 114 (11th Cir. 2022). “The question, however, is not whether the purchasing public can readily distinguish [between the products,] but whether the products are the kind the public attributes to a single source.” E. Remy Martin & Co., S.A. v. Shaw-Ross Int’l Imps., Inc., 756 F.2d 1525 (11th Cir. 1985).

When considering the similarity of the products’ sales, the Courts consider where, how, and to whom the parties’ products are sold. “Direct competition between the parties is not required for this factor to weigh in favor of a likelihood of confusion, though evidence that the products are sold in the same stores is certainly strong. The parties’ outlets and customer bases need not be identical, but some degree of overlap should be present.” Wreal, LLC v. Amazon.com, Inc., 38 F.4th 114 (11th Cir. 2022). For determining the similarity of advertising, the standard “is whether there is likely to be significant enough overlap in the readership of the publications in which the parties advertise that a possibility of confusion could result.”

The intent factor asks whether the “defendant adopted [the] plaintiff’s mark with the intention of deriving a benefit from the plaintiff’s business reputation.” Frehling Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330 (11th Cir. 1999). Finally, “evidence of actual confusion is the best evidence of a likelihood of confusion.” Frehling Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330 (11th Cir. 1999). However, “it is not necessary to show actual confusion. One merely has to show that the likelihood of confusion exists.” Wreal, LLC v. Amazon.com, Inc., 38 F.4th 114 (11th Cir. 2022).

Peter Mavrick is a Fort Lauderdale business litigation lawyer, and represents businesses in Miami, Boca Raton, and Palm Beach. This article does not serve as a substitute for legal advice tailored to a particular situation.