Anne Gilson LaLonde on the Role of Trademark Similarity in the Likelihood of Confusion Determination

Anne Gilson LaLonde on the Role of Trademark Similarity in the Likelihood of Confusion Determination

 

The trademark similarity factor plays a crucial role in likelihood of confusion analysis, though the appellate courts are split over whether courts may look at that factor alone in determining trademark infringement. In this commentary, Anne Gilson LaLonde explains where Jada Toys, Inc. v. Mattel, Inc., 496 F.3d 974 (9th Cir. 2007), falls in the appellate spectrum and provides practical guidance for practitioners and judges in trademark law cases hinging on likelihood of confusion and similarity of trademarks. She writes:
 
     From 2001 to 2004, Jada Toys, Inc. produced a line of diecast toy trucks called HOT RIGZ. Mattel, Inc. produces HOT WHEELS brand toy vehicles, including small scale versions of big rig trucks. In 2004, Jada Toys sued Mattel over unrelated trademarks, and Mattel filed a counterclaim alleging that Jada Toys’ HOT RIGZ mark infringed its HOT WHEELS mark. The HOT RIGZ design mark has the image of the cab of a truck on the left, the word mark outlined in purple with yellow and white inside, and a flame on the right. The HOT WHEELS design mark has a flame on the left and the word mark outlined in red with yellow and white inside.
 
     The district court found that the two marks were so dissimilar that, as a matter of law, there was no infringement, and granted summary judgment to Jada Toys. Jada Toys, Inc. v. Mattel, Inc., No. CV 04-2755 (C.D. Cal. Mar. 25, 2005) (judgment). The lower court noted that, while the marks both “use a graded color scheme in conjunction with a shooting flame design, and incorporate the word ‘hot,’” the words RIGZ and WHEELS sound entirely different and have different meanings. Further, the marks overall are not visually similar. Because the marks are “clearly dissimilar,” concluded the district court, it “need not consider the other likelihood of confusion factors.”
 
     The Ninth Circuit rejected this simplistic approach and reversed. The lower court was wrong to consider only the dissimilarity of the marks; it should have also taken into account the remainder of the factors checklist. While a determination of likelihood of confusion may ultimately be based on a subset of factors, a court must consider the most important factors as part of that subset. Where two marks appear dissimilar, the court held, evidence of actual confusion and the context in which the goods are sold are especially relevant. It concluded that, “though it may be true that very dissimilar marks will rarely present a significant likelihood of confusion, dissimilarity alone does not obviate the need to inquire into evidence of other important factors.” 496 F.3d at 980.
 
     ….
 
     Practitioners in this area should view Jada Toys as a cautionary tale and always discuss each factor of the circuit’s likelihood of confusion test in their briefs. Notably, the district court in the Jada Toys case simply signed a proposed judgment submitted by the attorney for Jada Toys as its judgment in the case. In light of the Ninth Circuit’s holding, and the holding of other courts on the issue, practitioners should also discuss each factor of the circuit’s likelihood of confusion test in their proposed judgments. If they fail to do so, the court may simply sign the proposed judgment and may face reversal on the ground that it did not sufficiently consider the relevant confusion factors.