Toilet Talk and Trademark Trouble: An Adventure Through a Likelihood of Confusion Analysis

By Alexandra Hodson

Although the title of this article may insinuate that we will be delving into SCOTUS’ recent decision in Iancu v. Brunetti,139 S. Ct. 2294 (2019)—a landmark case in which the Supreme Court invalidated the Lanham Act’s bar on federal registration of “scandalous” trademarks (a riveting matter, indeed!)—the focus of this discussion involves a different, but equally exciting, dirty word in the trademark realm: Infringement (gasp!).

The Scenario: Our Journey Begins with A Flood of Inspiration

Join me in fantasyland for a moment. Let’s pretend that, instead of being the successful, well-respected lawyer that you are, you’re an eager entrepreneur looking to disrupt an industry (you can be both if you want. #fantasyland). Recently, while you were bored on a flight,[i] you scrolled through your news feed and came upon a study concluding that 80% of marriages end over toilet seat disputes.[ii] This piqued your interest. You did more research and learned that germs under toilet lids are adapting into colonies of toxic super bugs resilient enough to survive a nuclear blast, and that, due to poor handwashing, these quiet killers are spreading at an alarming rate.

Being the innovator that you are, you decide to take the plunge and give that age-old toilet design an edgy facelift. So, you set out to create your modern toilet masterpiece. After months of trial and error, the product of your efforts is a veritable work of art. The seat is crafted from stainless steel[iii] to ward off germs. It has a warming mechanism and a germ-resistant non-stick coating for comfort. The lid is also stainless steel, and on it, you’ve integrated a light sensor. The sensor is connected to a mechanism in the hinge, so that when the light comes on in the restroom, the lid lifts up.

But that’s not all! You’ve also incorporated a button into the light switch that causes the toilet seat to retract when so desired.[iv] When the light is turned off, the seat, if retracted, returns to its original position, the lid closes, and the toilet flushes itself. Voila! You’ve basically saved the world. You dub this contraption the Light-n-Up Deluxe™ brand toilet[v] and begin advertising right away.

After several years pass, and you’ve spent many thousands of dollars on marketing and promotion, your pipe dreams are finally being realized. You have various small-scale operations selling your product and a potential contract with a big-name store in the works. It’s smooth sailing from here…or so you think.

The Trouble: A Rival Attempts to Unseat You from Your Throne

Out of the blue, you receive a nastygram in the mail. A company in the Midwest has revolutionized the toilet paper industry by manufacturing TP—as the kids call it—from clouds[vi] (yes, absurd, but doesn’t that sound nice?). It recently caught wind of you and claims that your use of Light-n-Up Deluxe™ for toilets is infringing its federally-registered trademark, Light’n Up Luxury®, for personal hygiene tissues.[vii] It demands that you cease and desist your use immediately, but graciously provides you with an opportunity to dump your existing product within “a reasonable time.” What are you to do?

First and foremost, don’t panic. Trademark infringement is a legal conclusion that involves consideration of multiple factors. Thus, just because you’ve been accused of infringement by some hufflepuffs four states away does not ipso facto mean that you are infringing their mark. On the other hand, don’t dismiss their warning—they may have a valid legal claim against you. An examination of the infringement factors will help you assess whether to fight or take flight[viii] in this situation.

Testing for Infringement

Trademark law serves the dual purpose of protecting consumers from unintentionally—key word here—buying low-quality knock-offs while simultaneously protecting trademark holders from losing profits and goodwill at the hand of imitators.[ix]

Typically, two things are considered when assessing whether trademark infringement has occurred: (1) is the allegedly infringed mark a valid trademark—e.g., is Light’n Up Luxury a true source indicator of their “personal hygiene tissues,” or is it merely descriptive of the product?; and (2) are consumers likely to be confused about the origin of the alleged infringer’s product—e.g., will consumers see the toilet with your mark on it and believe that it is sold by your TP-selling adversary?[x] This second prong is creatively termed the “likelihood of confusion” test.

Although different jurisdictions have adopted their own methods of analyzing whether consumers are likely to be confused, the various tests are comprised of multiple factors and essentially embody the same concepts. For an example, see the factors from the Ninth Circuit.

Factors from the Ninth Circuit
The test from the Ninth Circuit includes the following eight factors:

(1) strength of the mark;
(2) proximity of the goods;
(3) similarity of the marks;
(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 mark;
(8) and likelihood of expansion of the product lines.[xi]

While “some factors—such as the similarity of the marks and whether the two companies are direct competitors—will always be important,”[xii] others are given more or less weight depending on the context.[xiii] For instance, where products compete in the market, similarity of the marks is key.[xiv] However, “[w]hen the goods are related, but not competitive, several other factors are added to the calculus.”[xv]

Applying the Test to Your Scenario

For this exercise, we’ll assume that the TP maker’s mark is valid.[xvi] As a result, we must analyze the likelihood of consumer confusion as to the source of your product. We’ll do so using the Ninth Circuit’s factors. Because the products do not compete (even in fantasyland), we need to address factors other than just similarity of the marks.

For purposes of brevity, let’s say that we already know that your respective marketing channels are distinct and that there’s no evidence of actual confusion that they are the source of your product. Their mark is likely suggestive or arbitrary[xvii] so let’s assume it’s relatively strong (boooo, hiss. Strong marks are afforded greater protection). Now, we’ll assess the remaining factors to determine the likelihood of confusion in this scenario, beginning with similarity of the marks.

“Similarity of the marks is tested on three levels: sight, sound, and meaning.”[xviii] In assessing this factor, the marks “must be considered as they are encountered in the marketplace.”[xix] As a refresher, the marks at issue here are Light-n-Up Deluxe™ in relation to toilets and Light’n Up Luxury® in relation to toilet paper.[xx] Although the meanings of the marks arguably differ, and they are most likely not encountered near each other in the marketplace, they look and sound very similar. As a result, this factor will likely weigh against you. Not great so far.

The next factor we’ll address is proximity of the goods. The more related the goods are, the more likely consumers will be confused as to source, especially if the products are used together.[xxi] TP and toilets are like biscuits and gravy—you don’t always get one with the other, but it’s good when you do. Thus, because the products are complementary, this factor will also likely weigh against you.

Regarding the type of goods and degree of customer care, the more important or expensive the goods are, the more discerning a purchaser will likely be in the brand they choose.[xxii] TP is generally a low-ticket item; however, if you had a dollar from every person who’s had an unfortunate encounter with subpar toilet paper, you wouldn’t be selling toilets for a living. Thus, considering that the price of your high-end commodes is roughly $1,000 (can you even put a price on saving the world, though?), and that choosing which TP to purchase is a crucial decision, we’ll conclude that consumers have heightened spidey senses regarding brand choice both when purchasing toilets and the corresponding tissue. As a result, confusion as to source is less likely, and this factor will likely weigh in your favor.

Next, let’s address your intent in selecting the mark. This one’s easy. You certainly did not mean to capitalize on the efforts of those hufflepuffs; you didn’t even know they existed! They’d be hard-pressed to prove otherwise. Thus, this factor will likely weigh in your favor as well. Two for two, now.

Although things are looking a bit bleak, you have an ace up your sleeve. “Even where the . . . factors weigh in favor of the movant, . . . territorial divisions may prevent confusion.”[xxiii] Thankfully, you operate only in the Northwest while they operate exclusively in the Midwest, so consumer confusion is likely non-existent. Bada bing bada boom, you’re good to go, right?! Not so fast. We need to analyze one more factor to determine whether you can continue in your Light-n-Up Deluxe™ toilet-selling bliss—the likelihood of expansion factor.

Under the likelihood of expansion factor, “a ‘strong possibility’ that either party may expand his business to compete with the other will weigh in favor of finding that the present use is infringing.”[xxiv] “The question is whether the parties are likely to compete with a similar product in the same market.”[xxv] This factor is also relevant where products are closely related and one party plans to expand into the other’s geographic area, as confusion is more likely in that circumstance as well. Turning to your quandary: You’re not about to start selling toilet tissue, but if that big-name company you’re planning to sign a contract with will be selling your product in the Midwest, you may be in hot water. Lucky for you, they only run brick and mortar stores in your region and have the online presence of a luddite.

However, if those TP sellers can demonstrate imminent entry into your area or legitimate effort to break into the toilet game, your hopes and dreams may be flushed.[xxvi] Because we want your story to have a happy ending, let’s say that they admit they have no intention of moving into your market or selling your product, now or in the future. Phew—our adventure has ended! You can wipe the sweat from your brow and tell them to kindly put a lid on it.

The End: Getting a Handle on What We’ve Learned

What can we take away from this whirlwind experience? Perhaps most apparent from this scenario is that due diligence is key both when choosing a trademark and when deciding whether to expand into other markets once a trademark is established. It’s well worth the cost to conduct a thorough clearance search to avoid valid infringement claims or quashed hopes of expansion down the road.

Further, federal registration is highly recommended, as it provides perks such as the exclusive right to use the mark in connection with the goods, a presumption that the mark is valid, and the ability to license or assign the mark, among other benefits.

Finally, as in most circumstances, strength is a good thing. The more removed a mark is from describing the product (or service) the stronger it is, and the greater protection it will receive. Indeed, if a mark is too descriptive, it won’t qualify for trademark protection at all. Thus, never simply “call it as you see it” in the trademark realm—“pie” cannot be a trademark for pie, no matter how you slice it.

Alexandra Hodson graduated from the University of Idaho College of Law in May 2018 and passed the July 2018 Bar Exam. She was a judicial clerk for Idaho Supreme Court Justice Joel Horton from July until he retired in December 2018, at which time she completed her clerkship under Justice Horton’s successor, Justice Greg Moeller. She has a passion for all things intellectual property and recently accepted a position with the Intellectual Property group at Parsons Behle & Latimer in Boise.

[i] Hogwash, of course. A productive and zealous advocate such as yourself would never be bored in such a circumstance.

[ii] This statistic is complete fiction. However, a quick search for “marriage fights over toilet seat” is surprisingly fruitful and entertaining.

[iii] Polished steel, obviously, for aesthetic appeal. You’re not a robot.

[iv] It’s pliable…don’t ask questions.

[v] A little weak for a TM, if you ask me—you’re basically just describing what it does. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979).

[vi] Not the dark and stormy kind—the light and fluffy variety in which one envisions hearts and teddy bears.

[vii] They’ve not only registered their mark, but they’re also the senior user. Thus, they have priority. Shucks!

[viii] Not literal flight—we’re not in Neverland, after all.

[ix] See Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 163–64 (1995). “[T]rademark law. . . quickly and easily assures a potential customer that this item—the item with this mark—is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past.” Id. “At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product.” Id. at 164.

[x] Gordon v. Drape Creative, Inc., 909 F.3d 257, 264 (9th Cir. 2018).

[xi] Id. at 264 n.6 (quoting S. California Darts Ass’n v. Zaffina, 762 F.3d 921, 930 (9th Cir. 2014)). These are also known as the “Sleekcraft” factors, which were announced in AMF Inc., 599 F.2d at 351. Other circuits have adopted a test that closely resembles that of the Ninth Circuit. See Guthrie Healthcare Sys., 826 F.3d at 37; Arrowpoint Capital Corp. v. Arrowpoint Asset Mgmt., LLC, 793 F.3d 313, 319 (3d Cir. 2015). Although courts rarely seem to stray from the listed factors in their analyses, the lists are non-exhaustive. See Guthrie Healthcare Sys., 826 F.3d at 37; Arrowpoint Capital Corp., 793 F.3d at 319; Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1145 (9th Cir. 2011).

[xii] Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1054 (9th Cir. 1999).

[xiii] Id. (“Some factors are much more important than others, and the relative importance of each individual factor will be case-specific. . . . [I]t is often possible to reach a conclusion with respect to likelihood of confusion after considering only a subset of the factors.”). Further, “satisfaction of the likelihood-of-confusion standard requires a ‘probability of confusion, not a mere possibility.’ ” Guthrie Healthcare Sys., 826 F.3d at 37 (quoting Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 115 (2d Cir. 2009)).

[xiv] AMF Inc., 599 F.2d at 348.

[xv] Id. (footnote omitted).

[xvi] Notably, federal registration of a mark “is ‘prima facie evidence that the mark is . . . valid (i.e., protectable), that the registrant owns the mark, and that the registrant has the exclusive right to use the mark in commerce.’ ” Guthrie Healthcare Sys., 826 F.3d at 37 (quoting Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d Cir. 1999)).

[xvii] We won’t wade through the specifics here, but see AMF Inc., 599 F.2d at 349, for what those terms entail.

[xviii] AMF Inc., 599 F.2d at 351.

[xix] Id.

[xx] The ™ symbol may be used on non-registered marks, while ® may only be used on federally-registered marks.

[xxi] Restatement (First) of Torts § 731 cmt. c. (1938). “[I]f the two kinds of goods are used together, such association is more expectable than when they are used separately for different purposes. Pancake flour and maple syrup are likely to be associated with one source more readily than pancake flour and women’s shoes.” Id.

[xxii] Brookfield Commc’ns, Inc., 174 F.3d at 1060.

[xxiii] Russell Rd. Food & Beverage, LLC v. Spencer, No. 2:12-CV-01514-LRH, 2013 WL 321666, at *2 (D. Nev. Jan. 28, 2013).

[xxiv] AMF Inc., 599 F.2d at 354 (quoting Restatement (First) of Torts § 731(b) & cmt. c). “When goods are closely related, any expansion is likely to result in direct competition.” Id.

[xxv] Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1394 (9th Cir. 1993).

[xxvi] See Russell Rd. Food & Beverage, LLC, No. 2:12-CV-01514-LRH, 2013 WL 321666, at *3. “Likelihood of entry denotes an immediate, impending entry of the federal registrant into the junior user’s territory.” Id. (quoting 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 26:33 (4th ed. 2012)). “For instance, a federal registrant may prove that it has leased premises and is ready to begin sales, or that it has licensed the mark for the disputed territory.” Id.