Applying Trademark Principles to Domain Disputes

Applying Trademark Principles to Domain Disputes and Cybersquatting Matters.

One of the factors which must be proven in any trademark violation case, including cybersquatting actions, is that there is a likelihood of confusion caused by the alleged cybersquatters use of words or a logo. 

Likelihood of confusion exists when consumers viewing the mark would probably assume that the product or service it represents is associated with the source of a different product or service identified by a similar mark. Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1229 (3^rd Cir. 1978). To prove a "likelihood of confusion," it is not necessary to prove actual confusion in the marketplace. It is enough to prove a "likelihood" that the unauthorized use will create confusion. Salton, Inc. v. Cornwall Corp., 477 F.Supp. 975, 989 (D.N.J. 1979). However, instances of actual confusion are particular persuasive and important evidence proving the fact of a likelihood of confusion.

In Scott Paper, the Third Circuit Court of Appeals set forth then (10) factors to be considered in determining whether a "likelihood of confusion" exists, as follows:

(1) The degree of similarity between the owner's mark and the alleged infringing mark; (2) the strength of the owner's mark; (3) the price of the goods and other factors indicative of the care and attention expected of consumers when making the purchase; (4) the length of time the defendant has used the mark without evidence of actual confusion; (5) the intent of the defendant in adopting the mark; (6) the 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 and the minds of the public because of the similarity of function; (10) other factors suggesting that the plaintiff might manufacture a product in the defendant's market." Scott, supra at 1229; Securacomm, supra at 299.

The ten factors do not, however, have equal weight. The most important of the ten factors is the similarity of the marks. Thus, when an infringer uses the exact same trademark or service mark, "there is a great likelihood of confusion." U.S. Jaycees v. Philadelphia Jaycees, 639 F.2d 134, 142 (3^rd Cir. 1981).