Standard disclaimer: IANAL. Everything I know about trademark law and
the tests come from the information I've gleaned from lawyers as I've
prepared for my expert testimony. I'm sure there is much more I don't
know.
The following are the eight factors that most courts look at for
"likelihood of confusion":
1. the similarity in the overall impression created by the two marks
(including the marks' look, phonetic similarities, and underlying
meanings);
2. the similarities of the goods and services involved (including an
examination of the marketing channels for the goods);
3. the strength of the plaintiff's mark;
4. any evidence of actual confusion by consumers;
5. the intent of the defendant in adopting its mark;
6. the physical proximity of the goods in the retail marketplace;
7. the degree of care likely to be exercised by the consumer; and
8. the likelihood of expansion of the product lines.
[From this list, you can see why ING has a good reason to be going
after PNC. PNC's not got much to stand on here, from my limited
exposure to the fact.]
Usability testing would only help with #4 and maybe #7. The rest is
done by the courts (judge or jury).
If only one test passes (suggests a likelihood of confusion), the
judge/jury could rule in favor of the infringement.
If you were to do usability testing, it would have to stand up through
a heavy cross examination. Practically every case I've been solicited
on has suggested testing. And it's almost always disqualified because
to make it rigorous enough for court would be impractically expensive.
So, they tend to just rely on expert testimony -- still expensive, but
much cheaper (since you still need the expert testimony to explain and
back up the testing).
Remember, failing the tests are just a defense. Ideally, you avoid
needing a defense, since it's extremely costly. That's why so many
cases are settled.
Jared
On Aug 15, 2008, at 5:19 PM, Charles B. Kreitzberg wrote:
Hi Jared:
I've often thought that one way to defend this type of suit would be
to
conduct usability testing to see if, in fact, there was confusion.
There was
a similar suit against a small company called teracycle by Scotts
Fertilizer. Personally, I didn't see the similarity. But it ought to
be a
question that could be answered empirically.
Charlie
============================
Charles B. Kreitzberg, Ph.D.
CEO, Cognetics Corporation
============================
-----Original Message-----
From: [EMAIL PROTECTED]
[mailto:[EMAIL PROTECTED] On Behalf Of
Jared
Spool
Sent: Friday, August 15, 2008 4:49 PM
To: G. Jason Head
Cc: [EMAIL PROTECTED]
Subject: Re: [IxDA Discuss] ING sues PNC over alleged similarities
of Web
sites
On Aug 15, 2008, at 4:16 PM, G. Jason Head wrote:
Interesting enough it has to do a bit with the user interface on the
PNC Virtual Wallet site:
"The site features several orange balls used to highlight products
and
services PNC offers. ING alleges that PNC's use of the orange balls
could confuse customers who associate the orange balls with ING."
More info on the Post-Gazette site:
http://www.postgazette.com/pg/08228/904608-100.stm
Yup. Trademark infringement. Surprised that PNC went ahead with it.
Usually these things are settled before the suit is launched. (There's
a bunch of steps that ING would go through, starting with a standard
Cease & Desist letter.)
The interesting thing is that you can't easily argue it's a trademark
infringement if the elements are functional. By definition, trademark
(and trade dress) elements have to be non-functional, which is why we
don't see more of these types of suits on web sites.
However, that's a defense, which means that PNC will have to spend a
lot of money in court to protect the use of the orange balls. That's
why I'm surprised it's gotten this far -- I'm betting it's not worth
it to keep them orange. But, what do I know?
Jared
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