When Are Two Marks “Confusingly Similar”?: Trademarks and Naming

By Mark Skoultchi

October 28, 2008

Recently, I promised to answer the question most asked by our clients: What does it mean for a trademark to be confusingly similar to another trademark? Well, I lied. The question that’s really most asked by our clients is, “It’s gonna cost me how much to name this thing?!”

But the likelihood-of-confusion question is interesting, too. In making that determination, the Patent & Trademark Office (PTO) employs the Polaroid Test (named after the famous case of Polaroid Corp v. Polarad Electronics Corp.), which looks at such factors as:

* Degree of similarity between the marks (visually, phonetically). Think Starbucks vs. Starbuxx. A difference in spelling is not enough to avoid confusion if the marks are phonetically identical.

* Marketplace proximity. Suave Shampoo and Suave Dating Service could happily co-exist, but Oscar Mayer Bacon and Oscar Fryer Bacon would be a problem.

* Likelihood that the prior owner will “bridge the gap” and enter the market of the subsequent owner (or vice-versa) — though this is not always easy to predict. Consider that Apple Computer is now being sued yet again by the Beatles’ label, Apple Records. I wonder if that has anything to do with the success of iTunes!

* Actual confusion between the marks. Have consumers already been misled? Proven confusion is of course a good indication of likelihood of confusion!

* Strength of the prior mark in question (the more distinctive the mark, the stronger it is). You’re safer using a mark that is similar to an existing weak mark than an existing strong mark. So, if you’re going to start an online bookstore, call it “Books, Books, and More Books,” rather than “L’Amazon.”

* Sophistication of the buyers. A really interesting criterion. Consider car buyers and potato-chip buyers. Because of the time and investment involved in buying a car, buyers are much more likely to make an educated, deliberate purchase, and less likely to be confused by similar brand names, than their chip-buying counterparts. Or so they say. If you’re anything like me, you’re pretty particular about your snacks.

Like most intellectual-property law, likelihood of confusion isn’t black and white. But, if you remember these criteria, you’re in much better shape than most. Good luck, and happy naming!

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