Find out if the trademark you want is probably available with our US Federal trademark search.
Our trademark search compares similar and exact match marks to find confusingly similar trademarks to the trademark that you wish to use in connection with the goods and services that you tell us. Identical marks may not be confusingly similar when used with unrelated goods and services. A common example is DELTA: faucets vs. airline services.
Non-identical trademarks may considered confusingly similar based on an eight-factor test called the Sleekcraft test. This test comes from a 1979 decision in a case called AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). In this case, AMF’s registered trademark Slickcraft was similar to Sleekcraft.
1. Strength of the trademark;
2. Proximity of the goods;
3. Similarity of the trademarks;
4. Evidence of actual confusion;
5. Marketing channels used;
6. Type of goods and the degree of care likely to be exercised by the purchaser;
7. Defendant’s intent in selecting the trademark; and
8. Likelihood of expansion of the product lines.
The trademark search won’t take into account parts 4 and 7 of the Sleekcraft test because this trademark search is for prospective use and we don’t know about how you selected the trademark. The primary focus of our search will include an analysis of the strengths of the trademarks and the degree of similarity of the trademarks when the goods and services are identical or are related to those of the searched mark.
Strength of the trademark
Marks are often classified in categories of generally increasing distinctiveness; following the classical formulation. They may be:
- arbitrary; or
E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291 (9th Cir. 1992) (holding that strength of mark is determined by its placement on continuum of marks from “generic,” afforded no protection; through “descriptive” or “suggestive,” given moderate protection; to “arbitrary” or “fanciful” awarded maximum protection).
How strongly the plaintiff’s trademark indicates that the goods or services come from a particular source is an important factor to consider in determining whether the trademark used by the defendant is likely to create confusion with the plaintiff’s mark.
The plaintiff asserts that [insert trademark] is a trademark for its [goods or services]. The plaintiff contends that the defendant’s use of [insert defendant’s mark] in connection with the defendant’s [insert the defendant’s product or service] infringes plaintiff’s trademark because it is likely to cause confusion.
The Strength of Marks
The more distinctive and strong a trademark law is, the greater the scope of protection the law provides. The law measures trademark strength by considering two prongs:
- Commercial Strength: This is the amount of marketplace recognition of the mark; and
- Conceptual Strength: This is the placement of the mark on the spectrum of marks.
Commercial Strength: What is “commercial strength?” Not all marks are equally well known. Trademark strength is somewhat like the renown of people. Only a few very famous people are widely known and recognized around the world. Most people are known and recognized only by a small circle of family and friends.
Some trademarks are relatively “strong,” in the sense they are widely known and recognized. A few trademarks are in the clearly “famous” category. These “famous” marks are those like “Apple” for computers and mobile phones, “Google” for a search engine, “Coca-Cola” for beverages and “Toyota” for vehicles. Some trademarks may be strong and well known only in a certain market niche such as mountain climbing gear, plumbing supplies, or commercial airplane electronics equipment, but relatively weak outside that field.
Conceptual Strength: What is “conceptual strength?” All trademarks are grouped into two categories: either inherently distinctive or not inherently distinctive. If a mark is inherently distinctive it is immediately protected when first used. If it is not inherently distinctive, to become a legally protected mark, a designation must acquire distinctiveness in people’s minds by becoming known as an indication of source of goods or services. The law calls this “secondary meaning.” [SeeInstruction 15.11 (Infringement—Elements—Validity— Distinctiveness—Secondary Meaning). If the plaintiff’s mark is determined to be inherently distinctive, there will be no need to instruct the jury on acquiring a secondary meaning for the mark.]
For determining the conceptual strength of a mark, trademarks are grouped on a spectrum according to the nature of the mark. In the spectrum, there are three categories of word marks that the law regards as being inherently distinctive: coined, arbitrary and suggestive. Descriptive word marks are regarded as not being inherently distinctive and require a secondary meaning to become a valid trademark.
Coined and arbitrary words are regarded as being relatively strong marks. A coined word mark is a word created solely to serve as a trademark. For example, “Clorox” for cleaning products and “Exxon” for gasoline are coined marks.
Arbitrary marks are words that in no way describe or suggest the nature of the goods or services it is used with. For example, “apple” is a common word, but it does not describe or suggest anything about the nature of “Apple” brand computers or smart phones. It is an arbitrary word when used as a mark on those products and is said to be conceptually strong as a mark.
Suggestive word marks are regarded as not being as conceptually strong as coined or arbitrary marks. Suggestive trademarks suggest some characteristic or quality of the goods or services with which they are used. If the consumer must use her imagination or think through a series of steps to understand what the trademark is telling about the product, then the trademark does not directly describe the product’s features, but merely suggests them. For example, the trademark “Tail Wagger” for dog food merely suggests that your dog will like the food. As another example, when “apple” is used in the mark “Apple-A-Day” for vitamins, it is being used as a suggestive trademark. “Apple” does not describe what the vitamins are. However, it suggests the healthfulness of “an apple a day keeping the doctor away” with the supposed benefits of taking “Apple-A-Day” vitamins.
Descriptive word marks are not inherently distinctive. These marks directly describe some characteristic, or quality of the goods or services with which they are used in a straightforward way that requires no exercise of imagination. For instance, the word “apple” is descriptive when used in the trademark “CranApple” to designate a cranberry-apple juice. It directly describes one of ingredients of the juice.
These instructions relate to the strength of a trademark in the likelihood of confusion context. For strength of trademark analysis in the context of a mark validity determination, see Instruction 15.10 (Infringement—Elements—Validity—Unregistered Mark—Distinctiveness). Modify this instruction as necessary in any case involving service marks, collective trade or service marks, or certification trade or service marks, by inserting such terms in lieu of the word “trademark” in this instruction. An adjustment will also be necessary when the mark consists of a designation other than a word, such as an image, package appearance or the shape of a product.
This instruction uses a two prong test of mark strength. See 2 J. Thomas McCarthy, Trademarks And Unfair Competition § 11:83 (4th ed. 2015); One Industries, LLC v. Jim O’Neal Distrib., Inc., 578 F.3d 1154, 1164, (9th Cir. 2009) (noting that after placing mark on spectrum of distinctiveness, “The second step is to determine the strength of this mark in the marketplace”); Lahoti v. Vericheck, Inc., 636 F.3d 501, 508, (9th Cir. 2011) (noting that strength is determined by two-part test of conceptual and commercial strength); Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1126-27 (9th Cir. 2014) (“To determine the strength of Pom Wonderful’s ‘POM’ mark, we begin by placing it on the conceptual distinctiveness spectrum…. [W]e next consider whether the ‘POM’ mark has achieved sufficient marketplace recognition to transform it into a strong mark.”)
The following analysis was written by a three judge panel in the AMF v Sleekcraft case:
1. Strength of the trademark
A strong mark is inherently distinctive, for example, an arbitrary or fanciful mark; it will be afforded the widest ambit of protection from infringing uses. See, e. g., National Lead Co. v. Wolfe, 223 F.2d 195, 199 (CA 9), Cert. denied, 350 U.S. 883, 76 S.Ct. 135, 100 L.Ed. 778 (1955) (Dutch Boy not used geographically or descriptively, but in a “fictitious, arbitrary and fanciful manner”). A descriptive mark tells something about the product; it will be protected only when secondary meaning is shown.[FN12] See Miss Universe, Inc. v. Patricelli, 408 F.2d 506 (CA 2 1969); Cf. Hesmer Foods, Inc. v. Campbell Soup Co., 346 F.2d 356 (CA 7), Cert. denied, 382 U.S. 839, 86 S.Ct. 89, 15 L.Ed.2d 81 (1965) (barbecue beans used as a description, not a trademark). In between lie suggestive marks which subtly connote something about the products. Although less distinctive than an arbitrary or fanciful mark and therefore a comparatively weak mark, a suggestive mark will be protected without proof of secondary meaning. Watkins Products, Inc. v. Sunway Fruit Products, Inc., 311 F.2d 496 (CA 7 1962).
Slickcraft is, AMF asserts, a fanciful mark and therefore entitled to wide protection. This assertion is incorrect. The issue, as we view it, is whether Slickcraft is descriptive or suggestive of appellant’s boats.
The district court did not make any explicit finding regarding the strength of appellant’s mark. Implicitly, however, the findings indicate the mark was viewed as suggestive: proof of secondary meaning was not offered or discussed, and yet the district court concluded that the mark Slickcraft was valid and deserved some protection from potential infringement.
Whether Slickcraft is suggestive or descriptive is a close question. The line separating the two is uncertain; extrapolating the line from precedent would be impossible. Compare Van Camp Sea Food Co. v. Alexander B. Stewart Organizations, 50 F.2d 976, 979 (Cust. & Pat.App.1931) With Van Camp Sea Food Co. v. Packman Bros., 4 F.Supp. 522 (D.N.J.1933), Aff’d 79 F.2d 511 (3 Cir. 1935).
Although the distinction between descriptive and suggestive marks may be inarticulable, several criteria offer guidance. See generally McCarthy, Supra, at ss 11:21-11:22. The primary criterion is “the imaginativeness involved in the suggestion,” Restatement of Torts s 721, Comment a (1938): that is, how immediate and direct is the thought process from the mark to the particular product. From the word Slickcraft one might readily conjure up the image of appellant’s boats, yet a number of other images might also follow. A secondary criterion is whether granting the trademark owner a limited monopoly will in fact inhibit legitimate use of the mark by other sellers. There is no evidence here that others have used or desire to use Slickcraft in describing their goods. Another criterion is whether the mark is actually viewed by the public as an indication of the product’s origin or as a self-serving description of it. See Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794 (CA 9 1970). We think buyers probably will understand that Slickcraft is a trademark, particularly since it is generally used in conjunction with the mark AMF. (See Appendix A). Based on the above criteria and our reading of the district court’s findings, we hold that Slickcraft is a suggestive mark when applied to boats. But see Norm Thompson Outfitters, Inc. v. General Motors Corp., 448 F.2d 1293, 1295 (CA 9 1971) (applying Oregon law, court upholds finding by district court that slogan “Escape From The Ordinary” descriptive of assortment of unusual items).
Although appellant’s mark is protectible and may have been strengthened by advertising, See Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d at 800; Stork Restaurant, Inc. v. Sahati, 166 F.2d 348, 356 (CA 9 1948), it is a weak mark entitled to a restricted range of protection. Thus, only if the marks are quite similar, and the goods closely related, will infringement be found. See Westward Coach Manufacturing Co. v. Ford Motor Co., 388 F.2d 627, 634 (CA 7), Cert. denied, 392 U.S. 927, 88 S.Ct. 2286, 20 L.Ed.2d 1386 (1968) (weak mark protected only against similar goods, similarly marketed).
Jury Instructions Based on the Sleekcraft Test for Trademark Confusion
Model jury instructions for determining trademark confusion are provided in Federal District courts in the 9th Circuit and other circuits are based on the Sleekcraft test, as follows:
You must consider whether the defendant’s use of the trademark is likely to cause confusion about the source of the plaintiff’s or the defendant’s goods.
I will suggest some factors you should consider in deciding this. The presence or absence of any particular factor that I suggest should not necessarily resolve whether there was a likelihood of confusion, because you must consider all relevant evidence in determining this. As you consider the likelihood of confusion you should examine the following:
(1) Strength or Weakness of the Plaintiff’s Mark. The more the consuming public recognizes the plaintiff’s trademark as an indication of origin of the plaintiff’s goods, the more likely it is that consumers would be confused about the source of the defendant’s goods if the defendant uses a similar mark.
(2) Defendant’s Use of the Mark. If the defendant and plaintiff use their trademarks on the same, related, or complementary kinds of goods there may be a greater likelihood of confusion about the source of the goods than otherwise.
(3) Similarity of Plaintiff’s and Defendant’s Marks. If the overall impression created by the plaintiff’s trademark in the marketplace is similar to that created by the defendant’s trademark in [appearance] [sound] [or] [meaning], there is a greater chance [that consumers are likely to be confused by defendant’s use of a mark] [of likelihood of confusion]. [Similarities in appearance, sound or meaning weigh more heavily than differences in finding the marks are similar.]
(4) Actual Confusion. If use by the defendant of the plaintiff’s trademark has led to instances of actual confusion, this strongly suggests a likelihood of confusion. However actual confusion is not required for a finding of likelihood of confusion. Even if actual confusion did not occur, the defendant’s use of the trademark may still be likely to cause confusion. As you consider whether the trademark used by the defendant creates for consumers a likelihood of confusion with the plaintiff’s trademark, you should weigh any instances of actual confusion against the opportunities for such confusion. If the instances of actual confusion have been relatively frequent, you may find that there has been substantial actual confusion. If, by contrast, there is a very large volume of sales, but only a few isolated instances of actual confusion you may find that there has not been substantial actual confusion.
(5) Defendant’s Intent. Knowing use by defendant of the plaintiff’s trademark to identify similar goods may strongly show an intent to derive benefit from the reputation of the plaintiff’s mark, suggesting an intent to cause a likelihood of confusion. On the other hand, even in the absence of proof that the defendant acted knowingly, the use of plaintiff’s trademark to identify similar goods may indicate a likelihood of confusion.
(6) Marketing/Advertising Channels. If the plaintiff’s and defendant’s [goods] [services] are likely to be sold in the same or similar stores or outlets, or advertised in similar media, this may increase the likelihood of confusion.
(7) Consumer’s Degree of Care. The more sophisticated the potential buyers of the goods or the more costly the goods, the more careful and discriminating the reasonably prudent purchaser exercising ordinary caution may be. They may be less likely to be confused by similarities in the plaintiff’s and defendant’s trademarks.
(8) Product Line Expansion. When the parties’ products differ, you may consider how likely the plaintiff is to begin selling the products for which the defendant is using the plaintiff’s trademark. If there is a strong possibility of expanding into the other party’s market, there is a greater likelihood of confusion.