Every U.S. Circuit Court of Appeals follows its own criteria when assessing whether a trademark creates a likelihood of confusion with another. Despite the variations, most courts rely on similar considerations to evaluate potential trademark infringement. These factors, though not exhaustive, guide the courts in making informed decisions. This article provides an overview of the tests utilized by each federal circuit to assess trademark disputes.
First Circuit: Pignons Test with Eight Criteria
The First Circuit employs a test derived from Pignons S.A. de Mecanique de Precision v. Polaroid Corp.. The court weighs eight considerations: (1) the resemblance of the marks; (2) the likeness of the products or services; (3) the overlap in distribution channels; (4) the proximity of advertising efforts; (5) the intended audience; (6) instances of actual consumer confusion; (7) the defendant’s motives in adopting the contested mark; and (8) the overall strength of the plaintiff’s mark.
Second Circuit: Polaroid Test
The Second Circuit applies the Polaroid test, which includes: (1) the distinctiveness of the plaintiff’s mark; (2) similarity between the two trademarks; (3) the competitive nature of the products; (4) the possibility of the plaintiff expanding into the defendant’s market; (5) documented cases of confusion; (6) whether the defendant acted in bad faith; (7) the relative quality of the defendant’s product; and (8) the level of consumer expertise in the relevant market.
Third Circuit: Lapp Test with Ten Factors
The Third Circuit assesses ten aspects to determine if infringement exists, including: (1) resemblance between the marks; (2) the strength of the plaintiff’s brand; (3) the pricing and purchasing behavior of consumers; (4) the duration of mark usage without confusion; (5) intent behind mark adoption; (6) actual confusion among consumers; (7) shared marketing methods; (8) similarity in target demographics; (9) consumer perception of relatedness; and (10) any other relevant considerations suggesting likely expansion into the defendant’s market.
Fourth Circuit: Pizzeria Uno and Sara Lee Approach
In the Fourth Circuit, courts use a set of nine factors derived from the Pizzeria Uno and Sara Lee cases. These include: (1) how distinctive the plaintiff’s mark is in practice; (2) visual and auditory similarities between marks; (3) relatedness of the goods or services; (4) overlap in facilities; (5) similarity in advertising approaches; (6) defendant’s intent; (7) presence of actual confusion; (8) the quality of the allegedly infringing product; and (9) the expertise of consumers in the industry.
Fifth Circuit: Eight-Factor Test
The Fifth Circuit considers: (1) strength of the plaintiff’s trademark; (2) degree of similarity; (3) resemblance between the products; (4) overlap in retail locations and consumer base; (5) marketing and advertising strategies; (6) defendant’s intent; (7) actual confusion; and (8) the level of care exercised by consumers when making purchasing decisions.
Sixth Circuit: Frisch’s Factors
The Sixth Circuit relies on the Frisch’s test, evaluating: (1) the distinctiveness of the plaintiff’s mark; (2) how closely the products relate; (3) visual or phonetic similarities; (4) documented confusion; (5) marketing channels used; (6) customer diligence before making a purchase; (7) defendant’s motivations in adopting the mark; and (8) potential for the plaintiff to expand its offerings.
Seventh Circuit: Seven Key Considerations
The Seventh Circuit examines: (1) similarities in mark appearance and suggestion; (2) nature of the competing products; (3) areas and manner of concurrent use; (4) consumer diligence in purchasing; (5) strength of the original mark; (6) evidence of confusion; and (7) whether the defendant sought to pass off its product as the plaintiff’s.
Eighth Circuit: SquirtCo’s Six Factors
This circuit follows the SquirtCo test, looking at: (1) the original mark’s distinctiveness; (2) visual and phonetic similarities; (3) the extent to which the products compete; (4) whether the defendant intended to deceive; (5) instances of actual confusion; and (6) whether consumer diligence mitigates confusion.
Ninth Circuit: Sleekcraft’s Eight Considerations
The Sleekcraft test in the Ninth Circuit evaluates: (1) the strength of the original mark; (2) how closely related the goods are; (3) resemblance between the marks; (4) instances of confusion; (5) distribution channels; (6) consumer buying habits and attention to detail; (7) defendant’s intent in choosing the mark; and (8) the potential expansion of product lines.
Tenth Circuit: Six-Part Analysis
The Tenth Circuit weighs: (1) the resemblance of the marks; (2) defendant’s intent in selecting the name; (3) documented cases of confusion; (4) similarities between the products and marketing approaches; (5) consumer diligence; and (6) the inherent strength or weakness of the plaintiff’s mark.
Eleventh Circuit: Seven Evaluation Criteria
This circuit assesses: (1) the distinctiveness of the plaintiff’s mark; (2) how similar the trademarks appear; (3) overlap between the products; (4) sales methods; (5) advertising strategies; (6) whether the defendant sought an unfair advantage; and (7) documented confusion among consumers.
D.C. Circuit: Seven-Factor Test
The D.C. Circuit examines: (1) distinctiveness of the plaintiff’s mark; (2) resemblance between marks; (3) competitive relationship of products; (4) actual confusion evidence; (5) defendant’s intent in adopting the mark; (6) product quality; and (7) consumer expertise.
Federal Circuit: DuPont’s 13-Factor Framework
The Federal Circuit applies the DuPont test, which incorporates: (1) similarities in visual and phonetic aspects; (2) relationship of goods or services; (3) likelihood of common trade channels; (4) purchasing conditions; (5) strength of the prior mark based on sales and advertising; (6) third-party usage of similar marks; (7) cases of actual confusion; (8) duration of concurrent usage without confusion; (9) whether the mark is used as a house or product mark; (10) interaction between the applicant and prior mark owner; (11) exclusivity rights over the mark; (12) extent of probable confusion; and (13) any other relevant considerations.
Conclusion
While each U.S. Circuit Court has its own approach to determining likelihood of confusion in trademark infringement cases, most tests rely on shared fundamental principles. Businesses seeking to protect their brands should be aware of how their respective jurisdiction assesses these disputes to better prepare for legal challenges. Speak with one of our Trademark Lawyers to learn more.