What’s in a name? (Part 4)

by Jimmy Bewley | April 10, 2012

Evaluating a Mark

The legal battle came down to one question: Does a consumer risk the likelihood of confusion as to the source or ownership of the product or service with the defendant’s use of the trademarked language “Binder & Binder”? Courts typically evaluate the degree of confusion based on these eight factors:

  1. strength of the mark,
  2. proximity of the goods and services,
  3. similarity of the marks,
  4. evidence of actual confusion,
  5. marketing channels utilized,
  6. the type of goods and services and the degree of care likely to be exercised by the purchasers of the defendant’s product,
  7. the defendant’s intent in selecting the mark,
  8. and the likelihood of expansion of the product lines.

(AMF, Inc. v. Sleekcraft Boats, 599 F.2d.)

Using this specific test, it didn’t take long for the California court to complete an evaluation.  The Binder mark was strong. The marks were not just similar, they were identical. Both Binder & Binder and Disability Group, Inc., advertised through keyword marketing. They were in the exact same industry providing the exact same service and competing for the exact same clients. All this probably would have been enough for a successful outcome in favor of Binder & Binder, but there’s more. To add support for unquestionable confusion, additional evidence and witness testimony showed almost a unanimous majority of individuals polled during the trial thought they were being led to the Binder & Binder website following their search efforts. The same was true for submission forms. A unanimous majority thought they had filled out a Binder & Binder submission when it was actually a form for Disability Group, Inc. In the end, Binder & Binder was awarded $146,000 for lost profits. The court also found the defendants acted willfully and intentionally, which meant they risk treble damages for their infringing actions. All totaled, including attorneys’ fees, Binder & Binder was awarded $300,000, along with full control and recognition of its trademark.