AND · 15usc1125:likely-confusion
VersaTop is a Federal Circuit decision applying Ninth Circuit law. The cited Sleekcraft factors are flexible, not a nationwide arithmetic formula. Actual confusion is relevant evidence but not mandatory proof of likely confusion. Remedies may require evidence beyond liability.
Exact element source
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person,Source:
docroot/ir/usc/title15.jsonl#title15_sec1125; Unicode character offsets [395:670] (end exclusive); SHA-256 0a5680239d11ae3247a99abab2344db45177346d2d2e3050e95c82fb39f3aca7.Routes and case patterns
| Route | Definition | Merits instance blocks | Distinct merits cases | Examples (up to 3 cases per count group) |
|---|---|---|---|---|
| _whole accepted; 4 observed cases | The element is decided as a whole: the reasoning turns on no narrower doctrinal sub-question that distinguishes it from any other application of this element. | 3 Satisfied 2; not satisfied 1; excluded context 1 | 3 | Niagara Bottling, LLC v. CC1 Ltd. — 381 F. Supp. 3d 175 (2019) · United States District Court, D. Puerto Rico · 2019 — satisfied · pleaded (15usc1125: author: Flash3 · QA: FIX (Fable, neov2/cases/TRIAGE-Flash.md)) · applied/merits · counted Hard Candy, LLC v. Anastasia Beverly Hills, Inc. — 921 F.3d 1343 (2019) · United States Court of Appeals for the Eleventh Circuit · 2019 — not · proved (15usc1125: author: Flash3 · QA: FIX (Fable, neov2/cases/TRIAGE-Flash.md)) · applied/merits · counted Versatop Support Sys., LLC v. Ga. Expo, Inc. — 921 F.3d 1364 (2019) · United States Court of Appeals for the Federal Circuit · 2019 — satisfied · law (15usc1125: author: Astra2 · not independently reviewed) · applied/merits · counted 4 Pillar Dynasty LLC v. N.Y. & Co. — 933 F.3d 202 (2019) · United States Court of Appeals for the Second Circuit · 2019 — satisfied · proved (15usc1125: author: Flash3 · QA: FIX (Fable, neov2/cases/TRIAGE-Flash.md)) · applied/lower-court · not counted |
| reverse-confusion provisional; provisional (1 case) | Whether a larger junior user's use causes consumers to think the senior user's goods come from the junior user. | 0 Satisfied 0; not satisfied 0; excluded context 1 | 0 | Used only in non-merits blocks (1). Excluded context examples:Sportfuel, Inc. v. Pepsico, Inc. — 932 F.3d 589 (2019) · United States Court of Appeals for the Seventh Circuit · 2019 — not reached · basis not recorded (15usc1125: author: Astra2 · QA: PASS (QA2, neov2/qa/wave2-cases-QA2-crosscheck.md)) · rule-announced/merits · not counted |
How courts decided this element
| Case | Element | Holding and scope | Pattern | Exact source quotations |
|---|---|---|---|---|
| Niagara Bottling, LLC v. CC1 Ltd. — 381 F. Supp. 3d 175 (2019) · United States District Court, D. Puerto Rico · 2019 — satisfied · pleaded (15usc1125: author: Flash3 · QA: FIX (Fable, neov2/cases/TRIAGE-Flash.md)) | Likely consumer confusion about source or sponsorship | satisfied Counted merits instance applied / merits basis: pleaded; claim: (a); party: CC1 Limited Partnership; count: Eco-Air trademark infringement; subject: party=CC1 Limited Partnership; count=Eco-Air trademark infringement Under First Circuit eight-factor analysis, plaintiff plausibly pleaded likelihood of confusion based on near-identical design, identical bottled water product, and shared commercial trade channels in Puerto Rico, notwithstanding the absence of pleaded actual confusion. | multi-factor-similarity/bottled-water-packaging | Plaintiff provides a description and image of their Eco-Air Marks and alleges Defendant "adopted a design whose dominant features and overall appearance are practically identical ... [the] mark is also placed inside a white circle with half of the circle outlines in color blue with a green leaf concavely position at the bottom of the circle."Source: docroot/ir/caselaw/f_supp_3d_381.jsonl#/f-supp-3d/381/0175-01; Unicode character offsets [17610:17954] (end exclusive); SHA-256 7987994b779dabc8433e7979b5759eb92bba76c36aa5a22dfe7670bfb0665ed3.In the case at bar, both parties have similarities of services and customers because they target the general public in Puerto Rico and sell their product in similar ways; stores, online, among others.Source: docroot/ir/caselaw/f_supp_3d_381.jsonl#/f-supp-3d/381/0175-01; Unicode character offsets [18137:18337] (end exclusive); SHA-256 7987994b779dabc8433e7979b5759eb92bba76c36aa5a22dfe7670bfb0665ed3.In the instant case, Plaintiff has not provided the Court with any facts or allegations that can be construed as confusion.Source: docroot/ir/caselaw/f_supp_3d_381.jsonl#/f-supp-3d/381/0175-01; Unicode character offsets [19153:19276] (end exclusive); SHA-256 7987994b779dabc8433e7979b5759eb92bba76c36aa5a22dfe7670bfb0665ed3.Accordingly, the Court finds that Plaintiff satisfies the two prongs to establish trademark infringement.Source: docroot/ir/caselaw/f_supp_3d_381.jsonl#/f-supp-3d/381/0175-01; Unicode character offsets [20962:21067] (end exclusive); SHA-256 7987994b779dabc8433e7979b5759eb92bba76c36aa5a22dfe7670bfb0665ed3. |
| Hard Candy, LLC v. Anastasia Beverly Hills, Inc. — 921 F.3d 1343 (2019) · United States Court of Appeals for the Eleventh Circuit · 2019 — not · proved (15usc1125: author: Flash3 · QA: FIX (Fable, neov2/cases/TRIAGE-Flash.md)) | Likely consumer confusion about source or sponsorship | not Counted merits instance applied / merits basis: proved; claim: (a); party: Anastasia Beverly Hills, Inc.; count: Hard Candy cosmetic mark infringement / unfair competition (§ 1114(1), § 1125(a), common law); subject: party=Anastasia Beverly Hills, Inc.; count=Hard Candy cosmetic mark infringement / unfair competition (§ 1114(1), § 1125(a), common law) Eleventh Circuit affirms bench-trial finding (seven-factor test) that use of the words "hard candy" as one of four shade names in a highlighter palette was not likely to cause confusion; mark strength and similarity of products, channels and advertising favoured the plaintiff, but manner of use and the absence of actual confusion despite ample opportunity carried the finding. | plaintiff's word mark used as one of four shade names inside a competitor's clearly branded makeup palette; no actual confusion after large sales | The Gleam Glow Kit included the words "hard candy" in capital letters on the back and inside of the package to designate a peach-pink shade of makeup.Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1343-01; Unicode character offsets [3280:3430] (end exclusive); SHA-256 ee62519888b4322bf8eef654b7ee4994544ae2c9788de09364cc92bcadfad2c5.There was no dispute that both companies sell cosmetics products online and in retail stores, their customers are primarily women between the ages of 18 and 35, and both advertise their products through trade shows, social media, and traditional print media.Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1343-01; Unicode character offsets [36903:37161] (end exclusive); SHA-256 ee62519888b4322bf8eef654b7ee4994544ae2c9788de09364cc92bcadfad2c5.The district court looked to the overall impression created by the Gleam Glow Kit-the words "HARD CANDY" appeared only on the back and inside of the kit, "nam[ing] one shade of a product that is otherwise clearly and prominently featured as an Anastasia Beverly Hills mark."Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1343-01; Unicode character offsets [39498:39772] (end exclusive); SHA-256 ee62519888b4322bf8eef654b7ee4994544ae2c9788de09364cc92bcadfad2c5.Uncontroverted testimony at trial established that Anastasia sold 248,075 Gleam Glow Kits, totaling over $5 million in revenue.Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1343-01; Unicode character offsets [44162:44289] (end exclusive); SHA-256 ee62519888b4322bf8eef654b7ee4994544ae2c9788de09364cc92bcadfad2c5.And still, Hard Candy did not produce any evidence that a customer was ever actually confused about the source of the Gleam Glow Kit.Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1343-01; Unicode character offsets [44395:44528] (end exclusive); SHA-256 ee62519888b4322bf8eef654b7ee4994544ae2c9788de09364cc92bcadfad2c5.But the trial court must "compare[ ] the marks and consider[ ] the overall impressions that the marks create, including the sound, appearance, and manner in which they are used."Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1343-01; Unicode character offsets [38986:39164] (end exclusive); SHA-256 ee62519888b4322bf8eef654b7ee4994544ae2c9788de09364cc92bcadfad2c5.In sum, the record does not suggest that the district court committed clear error as to any of its findings, and it does not show clear error as to the court's ultimate conclusion that Hard Candy had not shown a likelihood of confusion.Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1343-01; Unicode character offsets [45016:45252] (end exclusive); SHA-256 ee62519888b4322bf8eef654b7ee4994544ae2c9788de09364cc92bcadfad2c5. |
| Versatop Support Sys., LLC v. Ga. Expo, Inc. — 921 F.3d 1364 (2019) · United States Court of Appeals for the Federal Circuit · 2019 — satisfied · law (15usc1125: author: Astra2 · not independently reviewed) | Likely consumer confusion about source or sponsorship | satisfied Counted merits instance applied / merits basis: law The court enters judgment on undisputed facts rather than merely finding a triable issue. The mixed fact sentence tagged cuts-against absent refers to its last clause, the asserted absence of actual confusion; its uncontested-factors clause supports the result. Absence of actual confusion does not defeat likely confusion under the flexible Ninth Circuit factors. | market-overlap/identical-marks-and-goods | These factors, as summarized in Au-Tomotive Gold , are "(1) strength of the mark(s); (2) relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels; (6) degree of consumer care; (7) defendant's intent; (8) likelihood of expansion." 457 F.3d at 1075-76. The Ninth Circuit has emphasized that "the eight factors [ Sleekcraft ] recited are not exhaustive," and should be applied "in a flexible manner." Network Automation, 638 F.3d at 1145.Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1364-01; Unicode character offsets [18544:19034] (end exclusive); SHA-256 e097d77ff3e2b2660ec97b4240c13672eab0fc9d8f05781fdfaf1b120b8c1ec9.The type of goods sold by both companies-the pipe and drape systems-are identical.Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1364-01; Unicode character offsets [19791:19873] (end exclusive); SHA-256 e097d77ff3e2b2660ec97b4240c13672eab0fc9d8f05781fdfaf1b120b8c1ec9.It is undisputed that the parties operate in the same marketing channels-the flyers were distributed by Georgia Expo for an industry trade show.Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1364-01; Unicode character offsets [19990:20134] (end exclusive); SHA-256 e097d77ff3e2b2660ec97b4240c13672eab0fc9d8f05781fdfaf1b120b8c1ec9.Georgia Expo, in both its own motion for summary judgment, and in opposition to VersaTop's cross-motion, made no argument regarding these likelihood of confusion factors, contending only that there was no evidence of actual confusion.Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1364-01; Unicode character offsets [20363:20597] (end exclusive); SHA-256 e097d77ff3e2b2660ec97b4240c13672eab0fc9d8f05781fdfaf1b120b8c1ec9.We therefore "conclude as a matter of law that likelihood of infringement is clear cut here."Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1364-01; Unicode character offsets [21850:21943] (end exclusive); SHA-256 e097d77ff3e2b2660ec97b4240c13672eab0fc9d8f05781fdfaf1b120b8c1ec9. |
| Sportfuel, Inc. v. Pepsico, Inc. — 932 F.3d 589 (2019) · United States Court of Appeals for the Seventh Circuit · 2019 — not reached (15usc1125: author: Astra2 · QA: PASS (QA2, neov2/qa/wave2-cases-QA2-crosscheck.md)) | Likely consumer confusion about source or sponsorship | not_reached Excluded from merits counts rule-announced / meritsClaimed confusion supplies context only; the court resolves the case through fair use without deciding that confusion exists or is absent. | confusion/reverse-confusion | "To prevail on either claim, a plaintiff must establish that (1) its mark is protectable and (2) the defendant's use of the mark is likely to cause confusion among consumers." CAE, Inc. , 267 F.3d at 673-74.Source: docroot/ir/caselaw/f3d_932.jsonl#/f3d/932/0589-01; Unicode character offsets [5934:6141] (end exclusive); SHA-256 f6820bdcc4c8d1f7c57b328a6c51f8af1f265db990f6acb029ef1ed054bfa251.In this case, the alleged reverse confusion would occur when Gatorade used its house mark alongside the term "Sports Fuel," which would effectively coopt SportFuel's trademark and confuse consumers by leading them to believe the companies were related.Source: docroot/ir/caselaw/f3d_932.jsonl#/f3d/932/0589-01; Unicode character offsets [24558:24810] (end exclusive); SHA-256 f6820bdcc4c8d1f7c57b328a6c51f8af1f265db990f6acb029ef1ed054bfa251. |
| 4 Pillar Dynasty LLC v. N.Y. & Co. — 933 F.3d 202 (2019) · United States Court of Appeals for the Second Circuit · 2019 — satisfied · proved (15usc1125: author: Flash3 · QA: FIX (Fable, neov2/cases/TRIAGE-Flash.md)) | Likely consumer confusion about source or sponsorship | satisfied Excluded from merits counts applied / lower-court basis: proved; claim: (a); party: New York & Company, Inc. and New York & Company Stores, Inc.; count: Velocity trademark infringement; subject: party=New York & Company, Inc. and New York & Company Stores, Inc.; count=Velocity trademark infringement Infringement was found by the jury and was not challenged in the post-trial motions or on appeal; the Second Circuit does not review likelihood of confusion. Recorded as a finding below, not as this court's ruling. | retailer's house-brand activewear line using the plaintiff's registered one-word mark for the same kind of goods | He testified that, at some point in 2015, a potential customer came to his office and asked him if he had licensed the "Velocity" mark to NY & C.Source: docroot/ir/caselaw/f3d_933.jsonl#/f3d/933/0202-01; Unicode character offsets [4672:4817] (end exclusive); SHA-256 808184e7a4f08f78dc6a871a04a50ff72f289fe9abf7a166064db0543d9edc8e.In his view, Defendants were selling the "exact" same type of products as his company; marketing them to the same demographic groups at a similar price; and unlawfully using the Velocity trademark to do so.Source: docroot/ir/caselaw/f3d_933.jsonl#/f3d/933/0202-01; Unicode character offsets [5122:5328] (end exclusive); SHA-256 808184e7a4f08f78dc6a871a04a50ff72f289fe9abf7a166064db0543d9edc8e.Here, in contrast, the District Court reasonably found the similarities between Defendants' products and the "Velocity" trademark to be "blatant."Source: docroot/ir/caselaw/f3d_933.jsonl#/f3d/933/0202-01; Unicode character offsets [14076:14222] (end exclusive); SHA-256 808184e7a4f08f78dc6a871a04a50ff72f289fe9abf7a166064db0543d9edc8e.The jury found that NY & C had infringed Reflex's trademark.Source: docroot/ir/caselaw/f3d_933.jsonl#/f3d/933/0202-01; Unicode character offsets [7377:7437] (end exclusive); SHA-256 808184e7a4f08f78dc6a871a04a50ff72f289fe9abf7a166064db0543d9edc8e. |
Court interpretations
interpretation
These factors, as summarized in Au-Tomotive Gold , are "(1) strength of the mark(s); (2) relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels; (6) degree of consumer care; (7) defendant's intent; (8) likelihood of expansion." 457 F.3d at 1075-76. The Ninth Circuit has emphasized that "the eight factors [ Sleekcraft ] recited are not exhaustive," and should be applied "in a flexible manner." Network Automation, 638 F.3d at 1145.
Versatop Support Sys., LLC v. Ga. Expo, Inc. — 921 F.3d 1364 (2019) · United States Court of Appeals for the Federal Circuit · 2019 (15usc1125: author: Astra2 · not independently reviewed)
These factors, as summarized in Au-Tomotive Gold , are "(1) strength of the mark(s); (2) relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels; (6) degree of consumer care; (7) defendant's intent; (8) likelihood of expansion." 457 F.3d at 1075-76. The Ninth Circuit has emphasized that "the eight factors [ Sleekcraft ] recited are not exhaustive," and should be applied "in a flexible manner." Network Automation, 638 F.3d at 1145.Source:
docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1364-01; Unicode character offsets [18544:19034] (end exclusive); SHA-256 e097d77ff3e2b2660ec97b4240c13672eab0fc9d8f05781fdfaf1b120b8c1ec9.VersaTop is a Federal Circuit decision applying Ninth Circuit law. The cited Sleekcraft factors are flexible, not a nationwide arithmetic formula. Actual confusion is relevant evidence but not mandatory proof of likely confusion. Remedies may require evidence beyond liability.