I. Determining the Strength of Your Mark.

The strength, or scope, of a trademark as used in the marketplace is determined by a multi-factored analysis called the likelihood of confusion test, and the scope can differ depending on the nature of the use that allegedly infringes your mark. In the analysis, the following factors are weighed: (1) the inherent and commercial strength of your mark; (2) the similarity of the parties’ respective marks; (3) the similarity of the parties’ respective goods or services; (4) the similarity of the parties’ respective marketing and advertising channels; (5) third-party users of similar marks on similar goods or services; (6) the intent of the alleged infringer in selecting its mark (e.g., was it selected to trade off your reputation or selected randomly?); (7) the likelihood that one party may expand into the other’s market; (8) evidence of actual confusion among relevant consumers due to the concurrent use of the marks; and (9) any other relevant evidence.

The relative weight given each factor varies in each case. A subset of the factors (and sometimes even one factor) may be so strong that they are dispositive of whether there is a likelihood of confusion, and hence infringement or no infringement. The scope of protection for a trademark used in the marketplace is illustrated below...