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Eight factors are helpful in demonstrating that there is a likelihood of confusion among consumers: 1) strength of the plaintiff's mark; 2) relatedness of the goods; 3) similarity of the marks; 4) evidence of actual confusion; 5) marketing channels used; 6) likely degree of purchaser care; 7) defendant's intent in selecting the mark; 8) likelihood of expansion of the product lines.
Plaintiff Frisch's Restaurants, Inc. held an exclusive license to use a restaurant trademark and service mark in Ohio. Defendants operated family restaurants in the neighboring states and eastern Ohio. Defendants were authorized to use the mark in the neighboring states only, however, the franchise agreement was terminated in late 1971. When the defendants’ restaurants continued to use the trademark after the franchise agreement was terminated, plaintiff sought and obtained a preliminary injunction. Plaintiff further requested that defendants be enjoined from using the trademark in any advertising medium that would reach a substantial number of Ohio residents. The district court granted the preliminary injunction with respect to television advertisements, but denied with respect to newspaper advertisements. Both parties appealed.
Under the circumstances, should the defendants be enjoined from using the trademark in question in any advertising medium, i.e., television advertisements and newspaper advertisements?
A preliminary injunction of defendant's television advertisements was affirmed, and a denial of an injunction of newspaper advertisements was reversed and remanded. According to the court, the mark was distinctive and desirable and the parties were competing chains using the identical trademark to promote related goods. The court further noted that the marketing methods used by both chains were likely substantially similar. The court held that under the circumstances, the plaintiff suffered cognizable injury. Failure to properly apply the likelihood of confusion standard to the newspaper advertising was an error of law and an abuse of discretion. Confusion was as likely to result from the newspaper advertisements as from the television advertisements. Because the ultimate determination of likelihood of confusion was a legal conclusion reviewable de novo, it was unnecessary to remand for further consideration.