Two Portland businesses, Heart LLC and Heart Pizza LLC, are currently battling over the use of their very similar names. Heart LLC has been using the trademark HEART in connection with specialty coffee goods and services since 2009. Heart Pizza LLC, on the other hand, started using the trademark HEART in connection with—you guessed it—pizza-related goods and services since February 2017. Despite the differences in their goods and services, Heart LLC wasn't thrilled about Heart Pizza LLC's use of the mark HEART. On August 21, 2017, Heart LLC sued Heart Pizza LLC for trademark infringement and unfair competition in federal court, claiming that Heart Pizza LLC's use of the mark HEART isconfusingly similar to Heart LLC's use of the mark HEART.

At the heart of each trademark infringement analysis is whether there is a “likelihood of confusion” between a trademark and the allegedly infringing mark.

(Pun very much intended.)

Heart Pizza LLC basically responded by saying coffee and pizza are too different for there to be a likelihood of consumer confusion. Heart LLC also alleged actual confusion. As consumers of both coffee and pizza, we've been confused about the affiliation between Heart LLC and Heart Pizza LLC too. (Speaking of, does anyone else remember the short-lived Heart Bar, the vegan burger joint took up Portobello's old space for a few months in 2017 before closing? That was a confusing time for us Portlanders!) But, evidence of actual consumer confusion is only one part of the equation, and in no way guarantees that Heart LLC will win the battle of the names.

In fact, evidence of actual confusion is only one of eight factors that the courts look at to determine whether a defendant has infringed. In AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979), the Ninth Circuit set forth eight factors for the courts to consider when determining whether there's a "likelihood of confusion" between a trademark and an allegedly infringing mark. Let's take a look at the Sleekcraft factors:

1. The Strength of the Plaintiff's Mark

The stronger the plaintiff's mark is, the higher the likelihood is that consumers would be confused about the source of the defendant's goods if the defendant uses a similar mark to the plaintiff's mark. For example, the Apple logo is a very strong and distinctive mark because the consuming public recognizes it as a brand indicator. Thus, if a security company starts using a similar mark to the Apple logo, consumers might wonder if Apple has gotten into the security business.

2. The Proximity of the Goods or Services

There's generally a greater likelihood of consumer confusion about the source of goods or services, if the plaintiff and defendant provide similar or complementary goods or services. Using Levi's Jeans as an example, consumers may be confused about the origin of goods if a defendant company starts using the mark LEVI'S in connection with any type of apparel. However, if that defendant company uses the mark LEVI'S in connection with a fruit stand, there may be no likelihood of confusion about the source of the fruit.

3. The Similarity of the Marks

If the trademarks create a similar overall impression, then there is a greater chance that consumers are likely to be confused about the origin of the goods or services. Overall impression can be determined by a mark's appearance, sound, and meaning. For example, let's say a defendant company creates an app called Zoogle, which gives animal rights activists a platform for liberating zoo animals. Let's also say that Zoogle uses the same font and primary colors as the Google logo. This would probably cause consumers to be confused as to whether Google was affiliated with Zoogle.

4. Evidence of Actual Confusion

As noted above, evidence of actual consumer confusion can suggest a likelihood of confusion. However, for this evidence to weigh strongly in favor of infringement, the actual confusion must be substantial. In other words, a few isolated instances of actual consumer confusion does not mean that the defendant's mark is infringing. This means that if a plaintiff makes one million sales each year, but only one or two consumers were actually confused, the court is going to consider this evidence to be negligible.

5. The Marketing Channels Used

If the goods and services of both the plaintiff and defendant are likely to be sold in the same or similar marketing channels, this may increase the likelihood of confusion. For example, the likelihood of confusion is potentially high for two Portland companies that both advertise on Instagram; whereas the likelihood of confusion is probably low for a Portland company that advertises on Instagram vs. a New Jersey company that advertises only in the newspaper.

6. The Consumer's Degree of Care

If the goods and services are such that consumers would exercise a high degree of care, then there is often less likelihood of confusion. For example, consumers are generally more diligent about doing their research before buying expensive, high-end goods or services. This means that these discriminating consumers are potentially less likely to be confused about the origin of the goods or services, even where marks may be similar.

7. The Defendant's Intent in Selecting the Mark

If the defendant knew about the plaintiff's mark and still chose to identify the defendant's goods or services in a way that's similar, then this can show that the defendant had an intent to ride on the coattails of the plaintiff's success. In other words, the defendant may have purposefully used a similar mark, to derive a benefit from the plaintiff's reputation and good will. Even though a defendant's bad faith doesn't necessarily mean there's a likelihood of confusion, courts still consider this an important factor in the infringement analysis.

8. The Likelihood of Expanding Goods or Services

The plaintiff's and defendant's goods or services don't have to exactly the same for there to be a likelihood of confusion. If there's a strong possibility that the one party will expand into the other party's market, then there is a likelihood of confusion. For example, Facebook isn't in the business of selling lingerie. If lingerie magazine calls itself Lacebook, there probably isn't a likelihood of consumer confusion because there isn't a strong possibility that Facebook would expand into the lingerie market.

Although we haven't taken sides with respect to the Heart LLC v. Heart Pizza LLC case, we're certainly curious to see how the court decides on the issue of infringement. But, you never know, the parties could always have a heart-to-heart conversation and settle the case early. Either way, we'll be keeping tabs on this interesting case as it develops.

Res Nova Law is an intellectual property and business law firm based in beautiful Portland, Oregon, and serving innovative companies and entrepreneurs across the Pacific Northwest. We have over 50 years of combined experience in intellectual property litigation, including trademark disputes. We can help you resolve your intellectual property dispute, whether the best path to resolution is settlement, arbitration, mediation, or trial. Get in touch with our highly-skilled trademark attorneys today.

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