Under the Lanham Act, any person who "use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark" which is "likely to cause confusion, or to cause mistake, or to deceive" can be liable for trademark infringement. 15 U.S.C. § 1114(1)(a). The Court weighs several factors. The first one is "(1) the strength of the plaintiff's mark.
Strength or distinctiveness "describes a mark's ability to allow consumers to identify the source of a good or service." MC3 Invs. LLC v. Loc. Brand, Inc., 661 F. Supp. 3d 1145, 1161 (N.D. Fla. 2023). There are four types of marks: "(1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary." Chandler, 733 F. Supp. 3d at 1264. "The stronger the mark, the greater the scope of protection accorded it; the weaker the mark, the less protection it receives."Earth, Wind & Fire IP, LLC v. Substantial Music Grp. LLC, 720 F. Supp. 3d 1261, 1280 (S.D. Fla. 2024). The Eleventh Circuit also "has long recognized that the extent of third-party use of a mark is an essential factor in determining a mark's strength." Fla. Int'l Univ. Bd. of Trustees v. Fla. Nat'l Univ., Inc., 830 F.3d 1242, 1257 (11th Cir. 2016). "The more that third parties make use of a mark, the less protection the mark will receive." It's A 10, Inc. v. Beauty Elite Grp., Inc., 932 F. Supp. 2d 1325, 1335 (S.D. Fla. 2013). "[E]ven arbitrarily applied common terms are of weaker trademark significance." Mango's Tropical Cafe, Inc. v. Mango Martini Rest. & Lounge, Inc., 844 F. Supp. 2d 1246, 1253 (S.D. Fla. 2011); Michael Caruso & Co. v. Estefan Enterprises, Inc., 994 F. Supp. 1454, 1458 (S.D. Fla. 1998)("A mark incorporating a common English word is inherently weaker than a mark consisting of fanciful and fictitious terms.").
The second factor is (2) the similarity between the plaintiff's mark and the allegedly infringing mark; The similarity is analyzed based on "overall impressions that the marks create, including the sound, appearance, and the manner in which they are used." Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 648 (11th Cir. 2007). In this context, "[t]he marks are examined in their entirety rather than simply comparing the similar terms or dominant features." Chandler, 733 F. Supp. 3d at 1264. Indeed, "[l]ikelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark." Michael Caruso, 994 F. Supp. at 1460. Moreover, "the mere fact that two marks contain the same word does not, in itself, make the marks substantially similar." MC3 Invs., 661 F. Supp. 3d at 1162.
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