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Augmented Legality
Blogs | January 31, 2013
4 minute read
Augmented Legality

Trademarks, Likelihood of Confusion, and Social Media

Trademark law in the United States has one overarching goal: to prevent consumers from being confused over the source of a product or service.  The function of a trademark is to communicate to the marketplace who is offering the good or service.  So, for example, when I'm driving down the road and spy the Golden Arches on a restaurant, I know I can go there to get a Big Mac and not a Whopper (if that's the way I swing).  But if a restaurant at the next highway exit uses a Golden N, or calls its burger the "Big Mack," I might be confused as to whether its goods and services are associated with, or sponsored by, McDonald's.  If, in fact, a court determines that a customer is likely to be confused in that situation, then the "Golden N" Restaurant has committed trademark infringement.

Thus, the test that courts employ to decide trademark infringement cases is the "likelihood of confusion" test.  Each federal appellate circuit articulates the factors of this multi-pronged analysis slightly differently.  But they are essentially the same, and they include such factors as the "channels of trade" in which the products are sold, the channels in which the goods are advertised, the evidence of actual confusion among customers, the degree of care that an average customer is likely to use in buying the product, the trademark owner's intent to expand into the defendant's market, and the similarity of the parties' goods.

Courts apply these factors on a case-by-case basis, and weigh their significance in light of the facts of the particular situation.  So no particular factor is necessarily more important than another. But when several courts have applied the same factors under similar circumstances, we can start to draw conclusions as to which facts are likely to be significant in those circumstances.

With that in mind, I have collected all the judicial opinions I could find applying the likelihood of confusion test in social media.  Here's what I found:

Similarity of the Goods/Services

Judge Nathaniel Gorton of the District Court of Massachusetts has held that the fact that both products are used "on the internet [or even with] social networking services is not specific enough to consider them substantially related products."  In the same decision, however, Judge Gorton found that two products offering search and curation functions in connection with social media were similar for trademark purposes, even though one automatically aggregated Facebook data into a "social newspaper," while the other relied on user-provided keywords on Twitter.

Likewise, another court found it significant that the parties' respective apps both allowed photo sharing, even though this was not the primary feature of one of the apps.

Advertising Channels and Intent to Expand

Judge Gorton found these factors to weigh in favor of likely confusion where both products were publicized online and were designed to function with social networks, especially where each party intended to later expand into the other's social network (Twitter for one, Facebook for the other.)

Multiple other courts, however, have held that mere fact that both companies advertise online, in social media, or even on Facebook does not, by itself, increase the likelihood of confusion.  As Judge Gene Pratter of the Eastern District of Pennsylvania noted, "advertising on the internet and, more specifically, on Facebook has become vast and indiscriminate, and virtually every business today uses the internet and Facebook for marketing purposes."

Actual Confusion

The plaintiff in Judge Gorton's case pointed to several posts on Twitter that confused the parties two products, which the judge found "persuasive."  Similarly, Judge Richard Sullivan of the Southern District of New York looked to customer's mistaken downloads and media reports as evidence that consumers were confused.

On the other hand, even where comments on a blog post suggested actual confusion, the Third Circuit Court of Appeals found them "of only limited value." "Comments left on blog posts can be very difficult to authenticate," it said. “Even if a poster is ‘legitimate,’ doubts will often remain as to the sincerity of the comment. And, finally, even if a poster is genuine and making a comment in good faith, whether he or she would fall in to the universe of consumers whose opinions are relevant (i.e., those who are or potentially might be purchasers of the products in question) often cannot be known."

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If you--or your clients--find yourself in a social media-related trademark infringement fray, these examples won't necessarily determine how the likelihood of confusion factors are applied in your case.  But they do suggest how the courts are beginning to apply longstanding trademark principles in this emerging realm.