Clarifying Likelihood of Confusion

In Naterra International, Inc. v. Samah Bensalem, a precedential opinion, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated the Trademark Trial and Appeal Board's denial of a petition to cancel a trademark based on its likelihood of confusion analysis.

Naterra International Inc., which holds multiple registrations for the mark "BABY MAGIC" across various toiletry goods, filed a Petition for Cancellation against Samah Bensalem's "BABIES' MAGIC TEA" mark. This mark is registered for medicated tea products aimed at alleviating colic and gas in babies. Naterra argued that the similarity between the two marks could lead to a likelihood of confusion. However, the Trademark Trial and Appeal Board (TTAB) initially denied this claim.

To assess the likelihood of confusion between marks, courts employ a set of criteria known as the DuPont factors, named after a landmark case that set the precedent for their use. These factors include, but are not limited to:

• The Similarity of the Marks: This looks at how similar the two marks are in appearance, sound, meaning, and overall commercial impression. Marks that are visually or phonetically similar are more likely to be confused.

  
  

• The Similarity of the Goods or Services: If the goods or services offered under both marks are closely related or fall within the same category, the chances of confusion increase.

  
  

• The Similarity of Trade Channels: This factor examines whether the products are sold through the same or similar trade channels to the same types of customers.

  
  

• The Strength of the Plaintiff's Mark: A strong, distinctive, or well-known mark is more likely to be protected against infringement. The strength of a mark can be determined by its uniqueness or fame within the marketplace.

  
  

• The Number and Nature of Similar Marks in Use on Similar Goods: The existence of multiple similar marks on related goods can affect the likelihood of confusion.

  
  

• The Presence or Absence of Actual Confusion: Although evidence of actual consumer confusion is not always necessary, it can serve as a compelling indicator of the likelihood of confusion.

  
  

• The Intent of the Defendant in Adopting the Mark: If it can be shown that the defendant chose the mark with the intention of creating confusion, this can weigh heavily in the plaintiff's favor.

  
  

• The Quality of the Defendant's Product or Service: Differences in quality between the goods or services can influence the likelihood of confusion.

  
  

• The Sophistication of the Buyers: The more knowledgeable and discerning the consumer, the less likely they are to be confused by similar trademarks.

In practice, the DuPont factors are weighted on a case-by-case basis, with some factors being more critical in certain contexts than others. Accordingly, effectively arguing the relevance and weight of these factors is crucial in determining trademark infringement.

In denying the plaintiff's likelihood of confusion claim, the TTAB gave "particular weight" to a lack of probative evidence showing the similarity of the goods or services, the strength of the plaintiff's mark, and the similarity of trade channels for the marks.

In overturning the TTAB's decision, the Court found that the Board had failed to give sufficient weight to the similarity of the marks factor, which strongly favored a likelihood of confusion. Here, the TTAB found that the first two words of the BABIES' MAGIC TEA mark and the entirety of the BABY MAGIC mark look and sound almost the same, and they have the same connotation and commercial impression. The term TEA was found to be generic and descriptive. The Court noted that the similarity of the marks "weighs heavily in the confusion analysis" and that a mark's "lead words are their dominant portion and are likely to make the greatest impression on consumers." Accordingly, the similarity of the marks factor should have weighed heavily in determining whether a likelihood of confusion existed between these marks.

The Court also found that the TTAB failed to consider relevant evidence regarding the relatedness of the goods and their trade channels. Notably, the Court highlighted the significance of umbrella branding and natural zones of expansion, pointing out that companies often sell both ingestible and skin care products under the same mark.

How TCP Law Can Help

A trademark attorney at TCP Law can help with the likelihood of confusion, evaluation, and determination. A trademark attorney can also draft and file a response that addresses likelihood of confusion rejections in a pending office action.

For assistance with a likelihood of confusion issue or with any other trademark issue, please contact TCP Law at info@tcplawfirm.com or at 917-612-1059.