15.19 Infringement—Likelihood of Confusion—Sleekcraft Factor 1— Strength or Weakness of the Plaintiff’s Mark

            As I have instructed you, one factor to consider in determining whether the trademark used by the defendant is likely to cause confusion with the plaintiff’s mark is the strength of the plaintiff’s mark.  The strength of the trademark is determined by its distinctiveness and recognition in the marketplace. How strongly the plaintiff’s trademark indicates that the goods or services come from a particular source is an important factor to consider in determining whether the trademark used by the defendant is likely to cause confusion with the plaintiff’s mark.

The Strength of Marks 

            The strength of a trademark is determined by its distinctiveness and recognition in the marketplace. The stronger a mark is, the greater the scope of protection the law provides. Measuring the strength of a trademark requires two steps. 

First, consider its conceptual strength. This is where the mark is placed on the spectrum of distinctiveness of marks. 

Second, consider the trademark’s commercial strength. This is how much marketplace recognition the mark has. 

            Conceptual Strength: What is “conceptual strength?” All trademarks are grouped into two categories: either inherently distinctive or not inherently distinctive. If a mark is inherently distinctive it is immediately protected when first used. If it is not inherently distinctive, to become a legally protected mark, a designation must acquire distinctiveness in consumers’ minds by becoming known as an indication of source of goods or services. The law calls this “secondary meaning.” [See Instruction 15.11 (Infringement—Elements—Validity— Distinctiveness—Secondary Meaning). If the plaintiff’s mark is determined to be inherently distinctive, there will be no need to instruct the jury on acquiring a secondary meaning for the mark.] 

            For determining the conceptual strength of a mark, trademarks are grouped on a spectrum according to the nature of the mark. In the spectrum, there are three categories of word marks that the law regards as being inherently distinctive: arbitrary, fanciful (or coined), and suggestive. Descriptive word marks are regarded as not being inherently distinctive and require a secondary meaning to become a valid trademark. Finally, generic names have no conceptual strength. 

            Arbitrary marks are words that in no way describe or suggest the nature of the goods or services with which they are used. For example, “apple” is a common word, but it does not describe or suggest anything about the nature of “Apple” brand computers or smart phones. It is an arbitrary word when used as a mark on those products. Arbitrary trademarks are regarded as conceptually strong marks. 

            Fanciful (or Coined) marks are words that are created solely to serve as trademarks. For example, “Clorox” and “Exxon” are coined marks for cleaning products and gasoline, respectively. Fanciful trademarks are regarded as conceptually strong marks and are equal to arbitrary marks in conceptual strength. 

            Suggestive word marks are not as conceptually strong as arbitrary or fanciful marks. Suggestive trademarks suggest some characteristic or quality of the goods or services with which they are used. If the consumer must use her imagination or think through a series of steps to understand what the trademark is telling about the product, then the trademark does not directly describe the product’s features, but merely suggests them. For example, the trademark “Tail Wagger” for dog food merely suggests that your dog will like the food. As another example, when “apple” is used in the mark “Apple-A-Day” for vitamins, it is being used as a suggestive trademark. “Apple” does not describe what the vitamins are. However, it suggests the healthfulness of “an apple a day keeping the doctor away” with the supposed benefits of taking “Apple-A-Day” vitamins. 

            Descriptive word marks are not inherently distinctive. These marks directly describe some characteristic, or quality of the goods or services with which they are used in a straightforward way that requires no exercise of imagination. For instance, the word “apple” is descriptive when used in the trademark “Tomapple” to designate a tomato-apple juice. It directly describes one of the ingredients of the juice. 

Generic Names. If the primary significance of an alleged mark is to name the type of product or service on offer, rather than to name the manufacturer or provider, the primary significance of the term is generic, and it cannot be a valid trademark. Such terms are known as generic names. 

The word “apple” can be used as a generic name. This occurs when the word is used to identify the fruit of an apple tree. The computer maker who uses the word “apple” as a trademark to identify its personal computer, or the vitamin maker who uses that word as a trademark on vitamins, has no claim for trademark infringement against a grocer who uses that same word to indicate fruit sold in its stores. As used by the grocer, the word is generic and does not indicate any particular source of the product. As applied to the fruit, “apple” is simply a commonly used name for what is being sold. Generic names have no conceptual strength. 

Commercial Strength: What is “commercial strength?” Not all marks are equally well known. Trademark strength is somewhat like the renown of people. Only a very few people are famous enough to be widely known and recognized around the world. Most people are known and recognized only by a small circle of family and friends. 

            Some trademarks have commercial strength” in the sense they are widely known and recognized. A few trademarks are in the clearly “famous” category. Examples of “famous” marks include “Apple” for computers and smart phones, “Google” for a search engine, “Coca-Cola” for beverages, and “Toyota” for vehicles. Some trademarks have commercial strength only in a certain market niche such as mountain climbing gear, plumbing supplies, or commercial airplane electronics equipment, but relatively weak outside that field. How well known a trademark is determined by actual marketplace recognition, which includes advertising expenditures and number of sales. 

Commercial strength can transform a mark that is not conceptually strong into a strong mark.

Comment 

            These instructions relate to the strength of a trademark in the likelihood of confusion context. For strength of trademark analysis in the context of a mark validity determination, see Instruction 15.10 (Infringement—Elements—Validity—Unregistered Mark—Distinctiveness). Modify this instruction as necessary in any case involving service marks, collective trade or service marks, or certification trade or service marks, by inserting such terms in lieu of the word “trademark.” An adjustment will also be necessary when the mark consists of a designation other than a word, such as an image, package appearance, or the shape of a product. 

            This instruction uses a two-prong test of mark strength. See One Industries, LLC v. Jim O’Neal Distrib., Inc., 578 F.3d 1154, 1164 (9th Cir. 2009) (noting that after placing mark on spectrum of distinctiveness, “[t]he second step is to determine the strength of this mark in the marketplace”);Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1126-27 (9th Cir. 2014) (“To determine the strength of Pom Wonderful’s ‘POM’ mark, we begin by placing it on the conceptual distinctiveness spectrum …. [W]e next consider whether the ‘POM’ mark has achieved sufficient marketplace recognition to transform it into a strong mark.” (citations omitted)); 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:83 (5th ed. 2019). 

            This instruction supplements Instruction 15.18 (Infringement—Elements—Likelihood of Confusion—Factors—Sleekcraft Test) by explaining how one Sleekcraft factor–strength of mark–is determined and describing the traditional spectrum of marks. See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992) (“Marks are often classified in categories of generally increasing distinctiveness; following the classical formulation  . . . they may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.”); SurfvivorMedia, Inc. v. Survivor Prods., 406 F.3d 625, 631-32 (9th Cir. 2005) (noting that trademarks are divided into five categories: arbitrary, fanciful, suggestive, descriptive, and generic); E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291 (9th Cir. 1992) (holding that strength of mark is determined by its placement on continuum of marks from “generic,” afforded no protection; through “descriptive” or “suggestive,” given moderate protection; to “arbitrary” or “fanciful,” awarded maximum protection). See also U.S. Patent & Trademark Office v. Booking.com B.V., 140 S. Ct. 2298, 2307-08 (2020) (rejecting proposition that combining generic term with “.com” yields generic composite). 

            The examples of the multiple uses of the word “apple” given in this instruction when used on a variety of different products are from 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:71 (5th ed. 2019). 

Commercial strength takes into account a mark’s “actual marketplace recognition.” See Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Mgmt., Inc., 618 F.3d 1025, 1034-35 (9th Cir. 2010) (observing that advertising expenditures, number of sales of shoes, and placement in a variety of popular magazines supported a finding of commercial strength). 

For evaluating the strength of a mark in reverse confusion cases, the questions are “whether consumers doing business with the senior user might mistakenly believe that they are dealing with the junior user” and what the conceptual strength of the senior mark is compared to the commercial strength of the junior mark. Ironhawk Techs., Inc. v. Dropbox, Inc.,2 F.4th 1150, 1162 (9th Cir. 2021) (quoting JL Beverage Co., LLC v. Jim Beam Brands Co., 828 F.3d 1098, 1107 (9th Cir. 2016)). 

Revised March 2024