To register a trademark with the United States Patent and Trademarks Office (USPTO), the applicant’s mark must be sufficiently distinctive so as not to cause confusion between the applicant’s marks and other marks in use in commerce held by other parties. A mark is likely to cause confusion if a “’reasonably prudent consumer’ in the marketplace is likely to be confused as to the origin of the good or service bearing” the mark. Glow Industries, Inc. v. Lopez, 273 F. Supp. 2d 1095, 1116 (CD Cal. 2003). Problems with the likelihood of confusion may arise during the trademark registration process or in the form of an infringement lawsuit.
To determine whether a mark is likely to cause confusion, courts typically review the following factors:
1) The strength of the mark.
2) The proximity or relatedness of the goods.
3) The competing marks’ similarities in appearance, sound, and meaning.
4) Evidence of actual confusion in the marketplace.
5) The degree to which the parties’ marketing channels converge.
6) The type of goods and the degree of care customers are likely to exercise in purchasing them.
7) Evidence of the alleged infringing party’s intention in selecting and using the mark.
8) The likelihood that the parties will expand their product line.
AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1999). The Sleekcraft factors guide the court and “are not to be rigidly weighed.” Dreamwerks Production, Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1998.) The court does not have to review all eight factors in making its determination. Apple Computers, Inc. v. Formula International, Inc., 725 F.2d 521, 526 (9th Cir. 1984).
During the registration process, problems often arise concerning the mark's strength. Generally, marks can fall into the following four categories, from weakest to strongest.
1) Generic;
2) Descriptive;
3) Suggestive; and
4) Arbitrary or fanciful.
Generic and merely descriptive marks[1] will not be approved for trademark registration by the USPTO. Marks that are suggestive, arbitrary, or fanciful may be approved for registration.
A mark is suggestive if it “conveys an impression of a good [product or service] but requires the exercise of some imagination and perception to reach a conclusion as to the product’s nature.” Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1058 (9th Cir. 1999)
A mark is arbitrary if it has “no intrinsic connection to the product for which the mark is used. [Arbitrary marks] consist of words commonly used in the English language whereas [fanciful marks] are wholly made-up terms.” Id. at 1058 (For example, Black & White (scotch whiskey) would be considered arbitrary, and Clorox (bleach) would be regarded fanciful.) Id.
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[1] "Generic terms cannot be protected as trademarks because 'they are common words or phrases that `describe a class of goods rather than an individual product,'' and thus do not relate exclusively to the trademark owner's product." Glow Industries, Inc. v. Lopez, 273 F. Supp. 2d 1095 (C.D. Cal. 2003)(Internal citations omitted). "Descriptive terms 'suffer from the same problem.' Descriptive terms relate more directly to a particular product than do generic terms, as they 'describe[] a person, a place or an attribute of [the] product.'..." Id. (internal citations omitted).