12 Oct Confusingly Similar?
A friend recently sent me this picture from a NY Street fair:
Does it remind you of another company?
Based on the appearance, would you assume that perhaps that other company is responsible for making this ‘new’ product? I would venture to say that there is pretty good chance that the above picture would cause high likelihood of confusion among consumers.
The following factors help the courts determine trademark infringement:
In determining trademark infringement the courts look at whether or not consumers will be confused (“likelihood of confusion”). To simplify, courts have several factors to consider when determining whether or not there is an infringement. Different courts have different variations, but all use a fairly similar list:
The eight factors generally looked at in New York – where this picture is from – are:
(1) strength of the trademark allegedly infringed. There is a hierarchy in strength of a trademark. Not all trademarks are equal. The easiest way to explain is, the more descriptive the trademark is of the goods or services, the weaker the trademark. SUBWAY has no real meaning in the food industry, so it is a strong mark;
(2) similarity between the registered trademark and the alleged trademark. Although the trademarks in question appear to be similar, it is not always an easy determination. To see the SUBWAY logo click here http://www.subway.com/. Obviously both SUBWAY and GYROWAY end in “WAY” and the Y in WAY in both images has an arrow. Additionally, both marks have similar coloring. Since the only apparent difference is GYRO vs SUB, similarity may be better decided by looking at the meaning of the literal elements. See point (3) below;
(3) similarity of the products or services. Important here, are the goods or services themselves and the proximity and competitiveness of the products with one another.
GYRO is a sandwich made with slices of spiced meat cooked on a spit, served with salad in pita bread.
SUB (short for submarine sandwich) is a sandwich made on a long roll, typically filled with meat, cheese, and vegetables such as lettuce, tomato, and onions.
Essentially, both are SANDWICHES.
With regard to proximity (and this can speak to physical location AND audience), would a consumer assume there may be a connection, relationship, or sponsorship of one brand with the other?;
(4) evidence that the original (“senior”) user may “bridge the gap.” By developing a product for sale in the market of the alleged infringer’s product, the original mark owner may decide to use the product in their own right. Perhaps SUBWAY has already or will begin selling gyros;
(5) evidence of actual consumer confusion. SUBWAY may have actually had customers come in asking for the “GYROWAY” they saw advertised;
(6) evidence that the imitative mark was adopted in bad faith. Did the alleged infringer actually use the mark in order to deceive? This may be hard to prove but can be illustrated with circumstantial evidence;
(7) respective quality of the products. Here they are both fast food in potentially the same category and level of quality, but this may be a subjective matter; and
(8) sophistication of consumers in the relevant market. Is this an everyday product or a highly specialized item that might only be used in a specific industry? Is it a high price item or low price item? Is this a spontaneous purchase or does the consumer carefully consider the purchase? Here, the product is fast food and so should not be considered a very sophisticated item.
My conclusion, this is a good case for likelihood of confusion.
For more information on the factors considered in a trademark infringement analysis see Polaroid Corp. v. Polarad Electronics, Corp., 287 F.2d 492 (2d Cir. 1961); Nora Beverages, Inc. v. Perrier Group of Am., Inc., 269 F.3d 114, 119 (2d Cir. 2001).
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.
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