Likelihood of Confusion in Trademark Law illuminates the pivotal multiple-factor test, giving readers a strong grasp of the key elements used by the courts to determine if likelihood of confusion exists. Packed with hundreds of real-world examples and updated with every relevant U.S. Court of Appeals decision, this treatise is a must-have reference for trademark specialists and other intellectual property attorneys, and important reading for corporate counsel, generalists, and corporate executives.

This update includes a new addition to the color illustrations in the appendix and new case law integrated into the text throughout. Among the topics addressed in this latest release:

• Purposes of trademark law: As summarized by the Supreme Court summarized in United States Patent & Trademark Office v. Booking.com: Trademark protection “secures to the owner of the mark the goodwill of her business and protects the ability of consumers to distinguish among competing producers . . . . Federal trademark protection, supplementing state law, supports the free flow of commerce and fosters competition.” See § 1:2, at note 43.1.
• First Amendment concerns—artistic expression cases: According to the Ninth Circuit, the likelihood of confusion test for infringement “ordinarily” strikes “a comfortable balance between the Lanham Act and the First Amendment. That said, where artistic expression is at issue, we have expressed concern that the traditional test fails to account for the full weight of the public’s interest in free expression” (Gordon v. Drape Creative, Inc.). See § 1:8.2, at note 183.1.
• Confusion and fair use: The Second Circuit, in Tiffany & Co. v. Costco Wholesale Corp., notes that “a defendant may raise a fair use defense even where the challenged material is likely to cause some confusion.” See § 1:10, at note 244.1.
• The multi-factor test in registrability proceedings: The TTAB follows the multi-factor du Pont test of the Federal Circuit, requiring consideration of thirteen factors which must be considered when relevant evidence is of record. See § 2:8, at note 158.1.
• Geographic terms: The TTAB says that “geographically descriptive terms are usually accorded less weight” in a confusion analysis, but it distinguishes certification marks. See § 3:4.1, at note 93.1.
• Disclaimers: A party’s disclaimer of one portion of its mark may result in the remaining portion being treated as dominant and a source of confusion. See § 4:9.4, at note 272.
• Collateral goods: Mark owners in every field commonly apply their brands to collateral items such as mugs and caps distributed as promotional giveaways. Collateral goods may provide significant revenue streams in cases of well-known brands. See § 5:7, at note 75.
• Actual confusion: Lack of evidence of actual confusion was not probative, according to the TTAB, where the Board found no “specific geographical areas of overlap between the [parties’] consumer markets” to create opportunities for actual confusion to occur (In re Guild Mortgage Co.). See § 7:7, at note 131.
• Bad faith: The Second Circuit observes in Tiffany & Co. v. Costco Wholesale Corp. that “[p]rior knowledge of a senior user’s trademark does not necessarily give rise to an inference of bad faith and may [actually] be consistent with good faith.” See § 8:4.2, at note 125.

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