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 entirety; 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]