Infringement: The Reality.

15.18  Infringement—Likelihood of Confusion—Factors—Sleekcraft Test

(15 U.S.C. §§ 1114(1) and 1125(a))

           The plaintiff asserts that [insert trademark] is a trademark for its goods. The plaintiff contends that the defendant’s use of[insert the defendant’s mark] in connection with the defendant’s [insert the defendant’s product] infringes the plaintiff’s trademark because it is likely to cause confusion.

You must consider whether a reasonably prudent consumer in the marketplace is likely to be confused as to the origin of the goods bearing one of the marks. 

            I will suggest some factors you should consider. You should not focus on any one factor toresolve whether there was a likelihood of confusion, because you must consider all relevant evidence. As you consider the likelihood of confusion you should examine the following: 

(1)       Strength or Weakness of the Plaintiff’s Mark. The more distinctive the plaintiff’s mark is and the more the consuming public recognizes the plaintiff’s trademark, the more likely it is that consumers would be confused about the source of the defendant’s goods if the defendant uses a similar mark. 

(2)       The Defendant’s Use of the Mark. If the defendant and the plaintiff use their trademarks on the same, related, or complementary kinds of goods, there may be a greater likelihood of confusion about the source of the goods than otherwise. 

(3)       Similarity of the Plaintiff’s and the Defendant’s Marks. If the overall impression created by the plaintiff’s trademark in the marketplace is similar to that created by the defendant’s trademark in [appearance] [sound] [or] [meaning], there is a greater chance [that consumers are likely to be confused by the defendant’s use of a mark] [of likelihood of confusion]. [Similarities in appearance, sound or meaning weigh more heavily than differences in finding the marks are similar.] 

(4)       Actual Confusion. If the defendant’s use of the plaintiff’s trademark has led to instances of actual confusion, this strongly suggests a likelihood of confusion. However, actual confusion is not required for a finding of likelihood of confusion. Even if actual confusion did not occur, the defendant’s use of the trademark may still be likely to cause confusion. As you consider whether the trademark used by the defendant creates for consumers a likelihood of confusion with the plaintiff’s trademark, you should weigh any instances of actual confusion against the opportunities for such confusion. If the instances of actual confusion have been relatively frequent, you may find that there has been substantial actual confusion. If, by contrast, there is a very large volume of sales, but only a few isolated instances of actual confusion, you may find that there has not been substantial actual confusion. 

(5)       The Defendant’s Intent. Knowing use by the defendant of the plaintiff’s trademark to identify similar goods may strongly show an intent to derive

benefit from the reputation of the plaintiff’s mark, suggesting an intent to cause a likelihood of confusion. On the other hand, even in the absence of proof that the defendant acted knowingly, the use of the plaintiff’s trademark to identify similar goods may indicate a likelihood of confusion. 

(6)       Marketing/Advertising Channels. If the plaintiff’s and the defendant’s goods are likely to be sold in the same or similar stores or outlets, or advertised in similar media, this may increase the likelihood of confusion. 

(7)       Consumer’s Degree of Care. The more sophisticated the potential buyers of the goods or the more costly the goods, the more careful and discriminating the reasonably prudent purchaser exercising ordinary caution may be. They may be less likely to be confused by similarities in the plaintiff’s and the defendant’s trademarks. 

(8)       Product Line Expansion. When the parties’ products differ, you may consider how likely the plaintiff is to begin selling the products for which the defendant is using the plaintiff’s trademark. If there is a strong possibility of expanding into the other party’s market, there is a greater likelihood of confusion. 

            [(9)      Other Factors. Insert any other factors that bear on likelihood of confusion.] 

Comment 

            The Ninth Circuit has often reaffirmed the validity of the eight-factor test from AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979), abrogated in part on other grounds by Mattel, Inc., v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003), that is covered in this instruction. See, e.g., Multi Time Mach., Inc. v. Amazon.com, Inc.,  804 F.3d 930, 935 & n.1 (9th Cir. 2015) (“To analyze likelihood of confusion, we utilize the eight-factor test set forth in Sleekcraft. However, ‘[w]e have long cautioned that applying the Sleekcraft test is not like counting beans.’” (quoting One Indus. LLC v. Jim O’Neal Distrib., Inc., 578 F.3d 1154, 1162 (9th Cir. 2009))). 

            Because the eight likelihood-of-confusion factors identified in Sleekcraft are neither exclusive nor exhaustive, the Committee recommends that the judge instruct only on the factors that are relevant in the case presented to the jury. See Brookfield Commc’ns Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1054 (9th Cir. 1999) (“[I]t is often possible to reach a conclusion with respect to likelihood of confusion after considering only a subset of the [Sleekcraft] factors[,] . . . [which do] not purport to be exhaustive, and non-listed variables may often be quite important.”); Metro Pub., Ltd. v. San Jose Mercury News, 987 F.2d 637, 640 (9th Cir. 1993) (“Because each [Sleekcraft] factor is not necessarily relevant to every case, this list functions as a guide and is neither exhaustive nor exclusive.” (citation and internal quotation omitted)), abrogated in part on other grounds by Cooter & Gell v. Hartmarx Corp., 496 U.S. 384, 405 (1990).

            Moreover, the third paragraph in this instruction warns that a jury should not focus on any one factor and to consider all relevant evidence in assessing likelihood of confusion. See Kendall-Jackson Winery Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1052 n.13 (9th Cir. 1998) (elaborating further on instructions on Sleekcraft factors dealing with defendant’s intent to cause confusion and causing actual confusion); Brookfield Commc’ns,174 F.3d at 1054 (“A word of caution: This eight-factor [Sleekcraft] test for likelihood of confusion is pliant. Some factors are much more important than others, and the relative importance of each individual factor will be case-specific.”).

            Domain Names. In trademark infringement cases involving domain names, the Ninth Circuit has affirmed the use of an additional instruction indicating that three of the Sleekcraft factors: (i) similarity of plaintiff’s and defendant’s mark; (ii) relatedness of services; and (iii) simultaneous use of the Internet as a marketing channel, otherwise known as the “Internet Troika,” are of greater importance. Internet Specialties W., Inc. v. Milon-Digiorgio Enters., Inc., 559 F.3d 985, 989 (9th Cir. 2009) (holding that law of Ninth Circuit “places greater import on the ‘Internet Troika’ in Internet cases”). 

Relevant Consumer Market. In Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190 (9th Cir. 2012), the Ninth Circuit assessed the relevant market as it examined one of the Sleekcraft factors—evidence of actual confusion. 683 F.3d at 1214. This instruction does not ask the jury or the court to first define the relevant consumer market before proceeding to the Sleekcraft factors; but see Ironhawk Techs., Inc. v. Dropbox 2 F.4th 1150 (9th Cir. 2021).

            Counterfeit Marks. There is a presumption of a likelihood of confusion “when the offending mark is a counterfeit mark, or a mark virtually identical to a previously registered mark coupled with the intent to pass off or borrow from established good will.” Louis Vuitton Malletier, S.A. v. Akanoc Sols., Inc., 658 F.3d 936, 945 (9th Cir. 2011) (approving instruction). A counterfeit mark is “a counterfeit of a mark that is registered . . . , whether or not the person against whom relief is sought knew such mark was so registered.” Id. (quoting 15 U.S.C. § 1116(d)(1)(B)(i)).

            Reverse Confusion. The Ninth Circuit recognizes two theories of consumer confusion that support a claim of trademark infringement: forward confusion and reverse confusion. Forward confusion occurs when consumers believe that goods bearing the junior mark came from, or were sponsored by, the senior mark holder. By contrast, reverse confusion occurs when consumers dealing with the senior mark holder believe that they are doing business with the junior mark holder. Reverse confusion is not a separate trademark claim that must be specifically pleaded. Instead, it is a theory of likely confusion that may be alleged by itself or in addition to forward confusion. Marketquest Grp., Inc. v. BIC Corp., 862 F.3d 927, 932, 937 (9th Cir. 2017); see also Ironhawk Techs.,2 F.4th at 1165 (“Evidence of actual confusion by consumers is strong evidence of likelihood of confusion.” Nevertheless, “failure to prove instances of actual confusion is not dispositive.” (citations omitted)).

Revised March 2024

Hill, S. (2024, September 15). Sleekcraft Test. The Birdcage Heights Neighborhood. https://birdcageheights.com/sleekcraft-test/

Strength of the Mark

A mark is “weak” if it is descriptive and has not acquired sufficient secondary meaning. A mark is “strong” when it has acquired secondary meaning, or if it is arbitrary, fanciful or suggestive. The owner of a weak mark will have difficulty proving likelihood of confusion. For example, the mark, Maid in America for cleaning services was determined to be descriptive. The owner was unable to demonstrate a sufficient showing of advertising or sales to prove secondary meaning. Therefore, the trademark owner did not prevail in a claim of infringement against a similar mark. If descriptiveness is an issue in an infringement action, a survey may be conducted to prove secondary meaning.

Similarity of the Marks

As a general rule, marks must be compared in their entirety, including appearance, sound, connotation and commercial impression. However, whether two marks are similar may require dissecting and comparing the elements of each mark.

In one case, the owner of the mark OAG Travel Planner sued the owner of the mark The Travel Planner. The court determined that the mark Travel Planner was descriptive and weak, but that the use of OAG in conjunction with “Travel Planner” created an arbitrary mark. Since there were similarities in sight and sound, the court determined that the marks were likely to confuse customers. Similarly, a court found similarity between Dutch Masters and Little Dutchman for cigars because of the common use of the dominant term “Dutch.”

However, adding a prefix or suffix, changing letters or adding clarifying information may not avoid a claim of similarity of marks. For example, the following marks were found to be similar: Magnavox and Multivox; Simoniz and Permanize; Platinum Puff and Platinum Plus; Zirco and Cozirc; and Maternally Yours and Your Maternity Shop.

In addition, the similarity of the meaning of the marks may also be taken into consideration. For example, the following marks were held to be similar: Mr. Clean and Mr. Rust and Mr. Stain; Thirty Forty Fifty and 60 40 20; and Pledge and Promise.

Learn how to Enforce Your Trademark Rights.

Similarity of the Goods

The standard of infringement is whether an ordinary prudent purchaser would be likely to purchase one item, believing he was purchasing the other. For example, Chlorit when used on bleach is likely to be confused with Chlorox. As a general rule, a trademark owner is permitted to use a similar mark as long it is on completely dissimilar goods. For example, the use of the mark Lexus on automobiles was determined not to confuse consumers of the Lexis database services.

The protection afforded to a trademark owner may extend to related goods. For example, a trademark for canned salmon may also extend to other canned fish. Use of a mark on kerosene lamps may extend to electric lamps. In such cases, the courts consider whether the buying public would reasonably expect that the goods came from the same source. The more extensively used and the more popular the mark, the more likely it is that consumers will expect an expansion of the product base. For example, would consumers confuse the McDonald’s trademark for food establishments with Quality Inn’s McSleep for motel services? Yes, according to a federal court. The reason is because the “Mc” prefix has been used so extensively by the McDonald’s Corporation that its expansion into non-food categories is expected. In fact, the company already has expanded into children’s clothing with its McKids clothing line. The same is true for the Coca Cola mark which has been licensed for clothing, glassware, puzzles, watches, bags and other non food items. The Coca-Cola mark has also been infringed on unlikely goods. (For example, the trademark has been used on “can wraps” which are labels intended to be wrapped around an alcoholic beverage to disguise its contents.)

The courts also consider the similarity of the advertising and distribution channels. Many courts weigh this evidence separately to determine if consumers or distributors may be exposed to potential confusion. For example, if the plaintiff sells salami directly to consumers but the defendant only sells salami in bulk to delicatessens, that may be an important factor in avoiding a claim of infringement.

Degree of Care Exercised By the Consumer

The degree of care exercised by the consumer varies according to the purchase. Generally, a buyer making a very expensive purchase is more likely to be discriminating and is less likely to be easily confused as to similar marks. The reason for this higher degree of care is because the consumer buys expensive items less frequently. Therefore the courts assume that such purchasers are likely to be more discriminating and source-conscious when purchasing real estate services, insurance or other “high ticket” items. Under these circumstances, the courts require a more substantial showing of similarity to justify a claim of likelihood of confusion. The same is true for items that are purchased by “professional buyers.” A professional buyer is a person who arrives at the purchasing point already knowledgeable about the goods (e.g., a pharmacist, physician, architects, builders, etc.) A professional buyer is less likely to be confused because of their superior knowledge as to purchasing decisions.

An ordinary purchaser, particularly one that buys inexpensive items on impulse is the most likely to be confused by similar marks. This consumer, for example, may quickly scan the aisle of a supermarket and impulsively purchase a box of garbage bags without realizing that she has been confused as to the choice of brands. In this instance, a lesser degree of care has been exercised. Therefore, less similarity may be necessary to prove likelihood of confusion.

Defendant’s Intent

Although the intent of the defendant is not essential in proving infringement, it is a relevant factor. According to the Restatement of Trademarks, it is appropriate to consider the defendant’s intent because a party intending to cause confusion will generally be successful in doing so. Direct evidence of the defendant’s intention to deceive is usually unavailable and the plaintiff must depend on circumstantial evidence such as how the defendant’s mark was chosen or whether the defendant continued use of the mark after plaintiff’s warning.

Actual Confusion

Proof of actual confusion is not essential in determining trademark infringement. However, such evidence may be compelling in an infringement case. Sometimes companies conduct surveys to determine actual confusion. These surveys are expensive and if improperly performed, they may subvert the plaintiff’s case.

https://www.nolo.com/legal-encyclopedia/likelihood-confusion-how-do-you-determine-trademark-infringing.html

The Court of Appeal began its analysis of the first prong by highlighting the third category of protected activities in § 425.16(e): “any written or oral statement or writing made in a place open to the public or a public forum in connection with an issue of public interest.” The Court divided the first prong’s analysis into two stages. In the first stage, the Court determined whether a publicly accessible website constitutes a public forum, and found that it does, as “Internet postings on websites that ‘are open and free to anyone who wants to read the messages’ and ‘accessible free of charge to any member of the public’ satisfies the public forum requirement of section 425.16.”[18]

In the second stage, the Court asked whether the content of the Dupré Reports represented an issue of public interest, and found that it did because the reports alleged that Zhongwang was artificially inflating reported sales and allegations of “mismanagement or investor scams” made against a publicly traded company constitute an “issue of public interest” for purposes of the anti-SLAPP law.

What is Anti-SLAPP?

Resources

• View state-by-state resources in the Reporters Committee’s Anti-SLAPP Legal Guide.
• View recent anti-SLAPP updates from across the U.S.

“Plaintiff cannot sustain a claim against Google under the Lanham Act for at least two reasons. First, while the creator of the RayFAQ website may indeed be using Plaintiff’s trademark by commenting on Parker’s writing, there is no likelihood of confusion regarding whether Parker is the creator of that website. Although Plaintiff sells access to his e-books and other seduction products on his website, he does not allege that the RayFAQ website sells any products or services. Plaintiff describes the wesbsite as merely containing negative comments about him and his writing.7 It does not purport to sell anything and is not in competition with Plaintiff’s website for customers. A consumer looking for Parker’s website on seduction and who is interested in purchasing seduction materials would not be confused by the RayFAQ website, which does not sell anything and instead focuses only on negative descriptions of Plaintiff. Moreover, it is difficult to accept the possibility that someone would believe that Parker himself created a website that refers to him so negatively. We see no likelihood of confusion. See Whitney Info. Network, 2005 WL 1677256, at *4 (finding no likelihood of confusion where defendant’s “ripoffreport.com” website was a consumer watchdog site and used plaintiff’s marks by posting consumer responses about plaintiff on the website).”  Parker v. Google, Inc., 552 U.S. 1156, 128 S. Ct. 1101, 169 L. Ed. 2d 834, 76 U.S.L.W. 3373 (2008)

Parker v. Google, Inc.

Plaintiff Board of Directors of Sapphire Bay Condominiums West (the Board) has operated as a condominium association in the Virgin Islands since 1969 under the trade name “Sapphire Bay Condominiums West.” Defendant George R. Simpson purchased a condominium at Sapphire Bay in 2003. Following a dispute with the Board, Simpson erected a series of “gripe sites” criticizing the Board, its members, and its attorney. In 2004, the Board filed the instant action alleging violations of the Lanham Act and analogous common law claims. The Board seeks to enjoin Simpson permanently from using the domain names associated with the gripe sites and also seeks compensatory and punitive damages.

After holding a bench trial on the merits, the Court concludes Simpson’s websites are or were not commercial in nature as required to find liability under the Lanham Act, but even if they were, the Board’s claims still fail because it did not show that its mark is famous or that the websites cause or caused a likelihood of confusion or actual deception. The Board’s related common law claims fail for similar reasons. As a result, the Court must deny the Board’s requests for injunctive relief and damages and enter judgment in favor of Simpson on all counts. Pursuant to Federal Rule of Procedure 52(a), the Court issues the following findings of fact and conclusions of law. (here for more)

The doctrine of “unclean hands” is an equitable defense in California, primarily used in civil cases. However, it is not codified as a specific statute but is rooted in case law and principles of equity.

In California, courts use the doctrine of unclean hands to prevent plaintiffs from pursuing claims if they have acted unethically or in bad faith in relation to the subject matter of the lawsuit. The doctrine is commonly applied in equitable claims such as contract disputes, fraud, and other civil matters.

To provide a more precise understanding, here’s an explanation based on case law rather than a statute:

California Civil Code Section 3517 states: “No one can take advantage of his own wrong.” This can be seen as embodying the principle underlying the unclean hands doctrine, though it doesn’t fully encapsulate it.

Case Law: The doctrine has been defined and refined in various California Supreme Court decisions. For instance:

In Blain v. Doctor’s Co. (1990) 222 Cal.App.3d 1048, 1060: The court noted that the unclean hands doctrine bars recovery where the plaintiff’s misconduct “directly relates to the very transaction concerning which [the plaintiff] complains.”

In Kendall-Jackson Winery, Ltd. v. Superior Court (1999) 76 Cal.App.4th 970, 978: It was affirmed that the unclean hands defense applies only when the plaintiff’s alleged misconduct is related to the defendant’s claim.

There is no specific California code section, or legal text, that lays out the doctrine. Instead, case law is referenced to understand its application in California courts.

The following is an analysis of the “clean hands” doctrine.

T. Leigh Anenson, J.D., LL.M, Ph.D (2024b, September 14). Announcing the “Clean Hands” doctrine – The Birdcage Heights neighborhood. https://birdcageheights.com/announcing-the-clean-hands-doctrine/?wyp_rand=885749

This domain name was first registered by a former marketing manager for Royal Dutch Shell plc, Alfred Donovan, and has been used as a “gripe site“.^[262] It avoids being an illegal cybersquatter as long as it is non-commercial, active, and no attempt is made to sell the domain name, as determined by WIPO proceedings.^[263] In 2005, Donovan said he would relinquish the site to Shell after it “gets rid of all the management he deems responsible for its various recent woes”.^[264] The site has been recognized by several media outlets for its role as an Internet leak. In 2008, the Financial Times published an article based on a letter published by royaldutchshellplc.com,^[265] which Reuters and The Times also covered shortly thereafter.^[266][267] On 18 October 2006, the site published an article stating that Shell had for some time been supplying information to the Russian government relating to Sakhalin II.^[268] The Russian energy company Gazprom subsequently obtained a 50% stake in the Sakhalin-II project.^[269] Other instances where the site has acted as an Internet leak include a 2007 IT outsourcing plan,^[270] as well as a 2008 internal memo where CEO Jeroen van der Veer expressed disappointment in the company’s share-price performance.^[271]

The gripe site has also been recognized as a source of information regarding Shell by several news sources. In the 2006 Fortune Global 500 rankings, in which Royal Dutch Shell placed third, royaldutchshellplc.com was listed alongside shell.com as a source of information.^[272]

In 2007, the site was described as “a hub for activists and disgruntled former employees”.^[273] A 2009 article called royaldutchshellplc.com “the world’s most effective adversarial Web site”.^[274] The site has been described as “an open wound for Shell”.^[268]

Wikimedia Foundation. (2024, September 16). Shell plc. Wikipedia. https://en.wikipedia.org/wiki/Shell_plc#royaldutchshellplc.com

https://royaldutchshellplc.com/

Fair Use for Trademarks (article).