Trademark infringement is a serious matter and one that is fact specific. The main concern when analyzing whether trademark infringement has occurred, includes determining whether there is a likelihood of confusion between the use of two or more trademarks, or whether actual consumer confusion has taken place.

The facts of each case are often complex and the implications quite important. It is recommended that you consult with a trademark attorney if you have questions about a legal matter that involves trademark infringement.

The factors used to evaluate whether trademark infringement has occurred can vary between the different circuits of the Federal Courts.

It is important to note that, not every factor may be relevant in each case and certain factors may be given more or less weight based on the facts.

Below are the factors considered by US Federal Courts when deciding matters of trademark infringement.

+ First Circuit-Likelihood of Confusion Factors

(also known as the Pignon Factors)

(1) the similarity of the trademarks;

(2) the similarity of the goods/services;

(3) the relationship between the parties' channels of trade;

(4) the relationship between the parties' advertising;

(5) the classes of prospective purchasers;

(6) evidence of actual confusion;

(7) the defendant's intent in adopting its trademark; and

(8) the strength of the plaintiff's trademark.

As set forth in Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir.1981).

+ Second Circuit-Likelihood of Confusion Factors

(1) the strength of the plaintiff's trademark;

(2) the similarity of plaintiff's and defendant's trademarks;

(3) the competitive proximity of the products;

(4) the likelihood that plaintiff will "bridge the gap" and offer a product like defendant's;

(5) actual confusion between products;

(6) good faith on the defendant's part;

(7) the quality of defendant's product; and

(8) the sophistication of buyers.

As set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.)

+ Third Circuit-Likelihood of Confusion Factors

(also known as the The LAPP Factors)

(1) degree of similarity between the owner's mark and the alleged infringing mark;

(2) strength of the owner's mark;

(3) price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase;

(4) length of time the defendant has used the mark without evidence of actual confusion;

(5) intent of the defendant in adopting the mark;

(6) evidence of actual confusion;

(7) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media;

(8) the extent to which the targets of the parties' sales efforts are the same;

(9) the relationship of the goods in the minds of consumers because of the similarity of function; and

(10) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant's market or that he is likely to expand into that market.

As set forth in Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir.1983)

+ Fourth Circuit-Likelihood of Confusion Factors

(1) the strength or distinctiveness of the plaintiff's mark,

(2) the similarity of the two parties' marks,

(3) the similarity of the goods and services the marks identify,

(4) the similarity of the facilities the two parties use in their businesses,

(5) the similarity of advertising used by the two parties,

(6) the defendant's intent, and

(7) actual confusion.

(8) the quality of the defendant's product; and

(9) the sophistication of the consuming public.

As set forth in Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir.1984) (Factors 1-7); and

Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455,463-64 (4th Cir. 1996 (Factors 8-9)

The Fourth Circuit has also added three other factors to their analysis in certain cases.

-the proximity of the products as they are actually sold

-the probability of the senior trademark owner "bridging the gap" by entering the defendant's market.,

-the parties geographic markets.&

*Shakespeare Co. v. Silstar Corp. of Am., 110 F.3d 234 (4th Cir. 1997),

&Ray Communications v. Clear ... Clear Channel Communications, 673 F.3d 294 (4th Cir. 2012)

+ Fifth Circuit-Likelihood of Confusion Factors

(1) type of trademark;

(2) similarity between the trademarks;

(3) similarity of products or services;

(4) identity of the retail outlets and purchasers;

(5) identity of the advertising media used;

(6) the accused infringer's intent;

(7) any evidence of actual confusion;

+ Sixth Circuit-Likelihood of Confusion Factors

(also known as the Frisch factors)

(1) strength of plaintiff's trademark;

(2) relatedness of the goods;

(3) similarity of the trademarks;

(4) evidence of actual confusion;

(5) parties’ marketing channels;

(6) likely degree of purchaser care;

(7) defendant's intent in selecting the trademark;

(8) likelihood of expansion of the product lines.

As set forth in Frisch’s Rest., Inc. v. Shoney’s Inc., 759 F.2d 1261, 1264 (6th Cir. 1985)

+ Seventh Circuit-Likelihood of Confusion Factors

(1) similarity between the trademarks in appearance and suggestion;

(2) similarity of the products;

(3) area and manner of concurrent use;

(4) degree of care likely to be exercised by consumers;

(5) strength of complainant's trademark;

(6) actual confusion; and,

(7) intent of defendant to 'palm off his product as that of another.’

+ Eighth Circuit-Likelihood of Confusion Factors

(1) the strength of the plaintiff’s trademark;

(2) the similarity between the plaintiff's and defendant's trademarks;

(3) the competitive proximity of the parties' products;

(4) the alleged infringer's intent to confuse the public;

(5) evidence of any actual confusion; and

(6) the degree of care reasonably expected of the plaintiff's potential customers.

As set forth in SquirtCo v. Seven-Up Co., 628 F.2d 1086 (C.A.8 (Mo.), 1980)

+ Ninth Circuit-Likelihood of Confusion Factors

(Also known as the Sleekcraft test)

(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;

(8) likelihood of expansion of the product lines.

As set forth in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.1979)

+ Tenth Circuit-Likelihood of Confusion Factors

(1) the degree of similarity between the trademarks;

(2) the intent of the alleged infringer in using the trademark;

(3) evidence of actual confusion;

(4) similarity of products and manner of marketing;

(5) the degree of care likely to be exercised by purchasers; and

(6) the strength or weakness of the trademarks.

As set forth in Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964 (10th Cir.2002)

+ Eleventh Circuit-Likelihood of Confusion Factors

(1) the strength of the allegedly infringed trademark;;

(2) the similarity of the infringed and infringing trademarks;

(3) the similarity of the goods and services the trademarks represent;

(4) the similarity of the parties’ trade channels and customers;;

(5) the similarity of advertising media used by the parties;;

(6) the intent of the alleged infringer, i.e., good or bad faith; and (7) the existence and extent of actual confusion in the consuming public.

As set forth in Savannah College of Art and Design, Inc. v. Sportswear, Inc., Case No. 15-13830 (11th Cir.1989).

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First Circuit-Likelihood of Confusion Factors

(also known as the Pignon Factors)

(1) the similarity of the trademarks;

(2) the similarity of the goods/services;

(3) the relationship between the parties' channels of trade;

(4) the relationship between the parties' advertising;

(5) the classes of prospective purchasers;

(6) evidence of actual confusion;

(7) the defendant's intent in adopting its trademark; and

(8) the strength of the plaintiff's trademark.

As set forth in Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir.1981).

Second Circuit-Likelihood of Confusion Factors

(1) the strength of the plaintiff's trademark;

(2) the similarity of plaintiff's and defendant's trademarks;

(3) the competitive proximity of the products;

(4) the likelihood that plaintiff will "bridge the gap" and offer a product like defendant's;

(5) actual confusion between products;

(6) good faith on the defendant's part;

(7) the quality of defendant's product; and

(8) the sophistication of buyers.

As set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.)

Third Circuit-Likelihood of Confusion Factors

(also known as the The LAPP Factors)

(1) degree of similarity between the owner's mark and the alleged infringing mark;

(2) strength of the owner's mark;

(3) price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase;

(4) length of time the defendant has used the mark without evidence of actual confusion;

(5) intent of the defendant in adopting the mark;

(6) evidence of actual confusion;

(7) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media;

(8) the extent to which the targets of the parties' sales efforts are the same;

(9) the relationship of the goods in the minds of consumers because of the similarity of function; and

(10) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant's market or that he is likely to expand into that market.

As set forth in Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir.1983)

Fourth Circuit-Likelihood of Confusion Factors

(1) the strength or distinctiveness of the plaintiff's mark,

(2) the similarity of the two parties' marks,

(3) the similarity of the goods and services the marks identify,

(4) the similarity of the facilities the two parties use in their businesses,

(5) the similarity of advertising used by the two parties,

(6) the defendant's intent, and

(7) actual confusion.

(8) the quality of the defendant's product; and

(9) the sophistication of the consuming public.

As set forth in Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir.1984) (Factors 1-7); and

Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455,463-64 (4th Cir. 1996 (Factors 8-9)

The Fourth Circuit has also added three other factors to their analysis in certain cases.

-the proximity of the products as they are actually sold

-the probability of the senior trademark owner "bridging the gap" by entering the defendant's market.,

-the parties geographic markets.&

*Shakespeare Co. v. Silstar Corp. of Am., 110 F.3d 234 (4th Cir. 1997),

&Ray Communications v. Clear ... Clear Channel Communications, 673 F.3d 294 (4th Cir. 2012)

Fifth Circuit-Likelihood of Confusion Factors

(1) type of trademark;

(2) similarity between the trademarks;

(3) similarity of products or services;

(4) identity of the retail outlets and purchasers;

(5) identity of the advertising media used;

(6) the accused infringer's intent;

(7) any evidence of actual confusion;

Sixth Circuit-Likelihood of Confusion Factors

(also known as the Frisch factors)

(1) strength of plaintiff's trademark;

(2) relatedness of the goods;

(3) similarity of the trademarks;

(4) evidence of actual confusion;

(5) parties’ marketing channels;

(6) likely degree of purchaser care;

(7) defendant's intent in selecting the trademark;

(8) likelihood of expansion of the product lines.

As set forth in Frisch’s Rest., Inc. v. Shoney’s Inc., 759 F.2d 1261, 1264 (6th Cir. 1985)

Seventh Circuit-Likelihood of Confusion Factors

(1) similarity between the trademarks in appearance and suggestion;

(2) similarity of the products;

(3) area and manner of concurrent use;

(4) degree of care likely to be exercised by consumers;

(5) strength of complainant's trademark;

(6) actual confusion; and,

(7) intent of defendant to 'palm off his product as that of another.’

Eighth Circuit-Likelihood of Confusion Factors

(1) the strength of the plaintiff’s trademark;

(2) the similarity between the plaintiff's and defendant's trademarks;

(3) the competitive proximity of the parties' products;

(4) the alleged infringer's intent to confuse the public;

(5) evidence of any actual confusion; and

(6) the degree of care reasonably expected of the plaintiff's potential customers.

As set forth in SquirtCo v. Seven-Up Co., 628 F.2d 1086 (C.A.8 (Mo.), 1980)

Ninth Circuit-Likelihood of Confusion Factors

(Also known as the Sleekcraft test)

(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;

(8) likelihood of expansion of the product lines.

As set forth in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.1979)

Tenth Circuit-Likelihood of Confusion Factors

(1) the degree of similarity between the trademarks;

(2) the intent of the alleged infringer in using the trademark;

(3) evidence of actual confusion;

(4) similarity of products and manner of marketing;

(5) the degree of care likely to be exercised by purchasers; and

(6) the strength or weakness of the trademarks.

As set forth in Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964 (10th Cir.2002)

Eleventh Circuit-Likelihood of Confusion Factors

(1) the strength of the allegedly infringed trademark;;

(2) the similarity of the infringed and infringing trademarks;

(3) the similarity of the goods and services the trademarks represent;

(4) the similarity of the parties’ trade channels and customers;;

(5) the similarity of advertising media used by the parties;;

(6) the intent of the alleged infringer, i.e., good or bad faith; and (7) the existence and extent of actual confusion in the consuming public.

As set forth in Savannah College of Art and Design, Inc. v. Sportswear, Inc., Case No. 15-13830 (11th Cir.1989).