Under the Lanham Act, any person who "use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark" which is "likely to cause confusion, or to cause mistake, or to deceive" can be liable for trademark infringement. 15 U.S.C. § 1114(1)(a). The Court weighs several factors. The first one is "(1) the strength of the plaintiff's mark.
Strength or distinctiveness "describes a mark's ability to allow consumers to identify the source of a good or service." MC3 Invs. LLC v. Loc. Brand, Inc., 661 F. Supp. 3d 1145, 1161 (N.D. Fla. 2023). There are four types of marks: "(1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary." Chandler, 733 F. Supp. 3d at 1264. "The stronger the mark, the greater the scope of protection accorded it; the weaker the mark, the less protection it receives."Earth, Wind & Fire IP, LLC v. Substantial Music Grp. LLC, 720 F. Supp. 3d 1261, 1280 (S.D. Fla. 2024). The Eleventh Circuit also "has long recognized that the extent of third-party use of a mark is an essential factor in determining a mark's strength." Fla. Int'l Univ. Bd. of Trustees v. Fla. Nat'l Univ., Inc., 830 F.3d 1242, 1257 (11th Cir. 2016). "The more that third parties make use of a mark, the less protection the mark will receive." It's A 10, Inc. v. Beauty Elite Grp., Inc., 932 F. Supp. 2d 1325, 1335 (S.D. Fla. 2013). "[E]ven arbitrarily applied common terms are of weaker trademark significance." Mango's Tropical Cafe, Inc. v. Mango Martini Rest. & Lounge, Inc., 844 F. Supp. 2d 1246, 1253 (S.D. Fla. 2011); Michael Caruso & Co. v. Estefan Enterprises, Inc., 994 F. Supp. 1454, 1458 (S.D. Fla. 1998)("A mark incorporating a common English word is inherently weaker than a mark consisting of fanciful and fictitious terms.").
The second factor is (2) the similarity between the plaintiff's mark and the allegedly infringing mark; The similarity is analyzed based on "overall impressions that the marks create, including the sound, appearance, and the manner in which they are used." Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 648 (11th Cir. 2007). In this context, "[t]he marks are examined in their entirety rather than simply comparing the similar terms or dominant features." Chandler, 733 F. Supp. 3d at 1264. Indeed, "[l]ikelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark." Michael Caruso, 994 F. Supp. at 1460. Moreover, "the mere fact that two marks contain the same word does not, in itself, make the marks substantially similar." MC3 Invs., 661 F. Supp. 3d at 1162.
The third factor is (3) the similarity between the products and services offered by plaintiff and defendant. In particular, the Court must look at "whether the products [and services] are the kind that the public attributes to a single source."Custom Mfg., 508 F.3d at 648. "The greater the similarity between the products and services, the greater the likelihood of confusion."Earth, Wind & Fire IP, 720 F. Supp. 3d at 1283.
The fourth factor is (4) the similarity of the sales methods or "where, how, and to whom the parties' products [and services] are sold." Custom Mfg., 508 F.3d at 648. "The parties' outlets and customer bases need not be identical, but some degree of overlap should be present." Chandler, 733 F. Supp. 3d at 1265. "Dissimilarities between the retail outlets for and the predominant customers of plaintiff's and defendant's goods or services lessen the possibility of confusion, mistake or deception." TracFone Wireless, Inc. v. Clear Choice Connections, Inc., 102 F. Supp. 3d 1321, 1330 (S.D. Fla. 2015).
The fifth factor is (5) the similarity of advertising methods. A court examines "each party's method of advertising to determine whether there is likely to be significant enough overlap in the respective target audiences such that a possibility of confusion could result."Custom Mfg., 508 F.3d at 648.
The sixth factor is (6) the defendant's intent, e.g., does the defendant hope to gain competitive advantage by associating his product with the plaintiff's established mark. The Court must determine "whether [Osinkowska] had a conscious intent to capitalize on [Jayakumar's] business reputation, was intentionally blind, or otherwise manifested improper intent."Custom Mfg., 508 F.3d at 648. "The primary question, therefore, is whether the allegedly infringing party acted in bad faith." MC3 Invs., 661 F. Supp. 3d at 1164
The seventh element is (7) actual confusion. "The actual confusion inquiry involves both the number of instances of confusion and the kind of person confused." Earth, Wind & Fire IP, 720 F. Supp. 3d at 1285. "Short-lived confusion or confusion of individuals casually acquainted with a business is worthy of little weight while confusion of actual customers of a business is worthy of substantial weight." Id. at 1285-86. When "consumers have been exposed to two allegedly similar trademarks in the marketplace for an adequate period of time and no actual confusion is detected either by survey or in actual reported instances of confusion, that can be powerful indication that the junior trademark does not cause a meaningful likelihood of confusion." Hard Candy, LLC v. Anastasia Beverly Hills, Inc., 921 F.3d 1343, 1362 (11th Cir. 2019).
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