Avoiding Confusion with the 8-Factor Test for Trademark Infringement
October 19, 2020
Trademark registration is essential for small business owners who are looking to build and protect the brand within their community. But when a competitor opens up down the street with the same or similar name, trademark registration may only be half the battle: customer confusion is the other half. Justice Elizabeth Hazlitt Emerson’s ruling in the recent case out of Suffolk County, JJFM Corp v Mannino’s Bagel Bakery, emphasizes the importance of establishing consumer confusion when it comes to trademark disputes.
In JJFM Corp, the court denied plaintiff’s motion for summary judgment and granted defendants cross-motion for summary judgment, finding that two families operating food establishments in the same town under the Mannino’s name did not constitute trademark infringement, unfair competition, or a unfair business practices in violation of New York General Business Law (“GBL”) §§ 349 and 360-k.
Plaintiff operates three family-owned Italian restaurants in Suffolk County: Mannino’s Pizzeria Restaurant (Smithtown), Mannino’s Restaurant & Lounge (Oakdale), and Mannino’s Italian Kitchen & Lounge (Commack). If visiting one of the plaintiff’s restaurants, one can expect high-quality Italian food in an elegant setting. Needless to say, the plaintiff wasn’t thrilled when defendants opened Mannino’s Bagel Bakery only a few miles away from plaintiff’s Smithtown location, selling deli items like bagels and sandwiches. Alleging defendants were capitalizing on the Mannino brand and good will, plaintiff brought suit for a permanent injunction and to recover damages.
While you may expect trademark infringement and unfair competition claims to be brought in Federal Court under the Lanham Act, rather than in State Court under the GBL, the elements required to prevail on trademark-infringement and unfair competition claims in New York mirror those required under the Lanham Act. The choice to use one or the other likely comes down to strategy, rather than a substantive legal difference. Under both the Lanham Act and GBL 360-k, a plaintiff must prove the defendant’s mark is likely to cause confusion, mistake or deception. To make this determination, the court employed a two-prong test: (1) whether plaintiff’s mark is entitled to protection; and (2) whether the defendant’s use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant’s goods.
Plaintiff easily satisfied the first prong because the logos for all three of its restaurants had been registered as service marks in New York since 2016, and two of the three were registered with the U.S. Patent and Trademark. Thus, the only issue for the court to determine was the likelihood of confusion. For this, the court employed an eight-factor test: (1) the strength of the plaintiff’s mark, (2) the similarity of the plaintiff’s and the defendant’s marks, (3) the proximity of the products, (4) the likelihood that the plaintiff will “bridge the gap,” (5) actual confusion between products, (6) the defendant’s good or bad faith in adopting the mark, (7) the quality of the defendant’s product, and (8) the sophistication of the buyers.
The court instructed that just because two marks appear similar is not dispositive. Rather they need to be compared against each other as a whole to determine whether such similarity is more likely than not to cause consumer confusion. Here, the court found that beyond using the common word “Maninno’s,” the plaintiff’s mark and the defendants’ bakery sign had no similarity; plaintiff’s mark showed the Mannino’s restaurant name in stylized lettering with shaded shapes, whereas defendants’ sign did not use the stylized lettering, shaded shapes, or words like “Italian,” “Kitchen,” “Pizzeria,” “Restaurant,” or “Lounge.” While the court determined the marks were not similar, it continued its analysis because “the use of the word ‘Maninno’s’ may still have some effect.”
Although registered trademarks are typically afforded the utmost protection, the court in this case determined the strength of plaintiff’s mark to be weak. Noting that “Mannino” is a relativity common Sicilian name and the name itself did not necessarily identify the product (such as “Bacardi” for rum, “Ford” for automobiles, or “Smucker’s” for jam), the court determined that plaintiff’s existence in Suffolk County since 1996 and brand notoriety was insufficient to give the Mannino’s mark a high strength rating.
The court found that despite the fact that the parties were both in restaurant business, their businesses were vastly different; one serving high end food with the other selling deli items. There was no evidence that plaintiff had any intention of entering the bagel or the delicatessen business, and thus had no intention of “bridging the gap.” Although there had been one instance where a check meant for the defendants was mistakenly sent to the plaintiff, and defendants were occasionally asked by customers if they were affiliated with the plaintiff, these facts were insufficient to evidence actual confusion between the two. The court found no evidence of bad faith, especially because when the defendants were asked if they was affiliated with the plaintiff, they responded “no.” Plaintiff alleged the defendants were taking advantage of its reputation for high-quality Italian cuisine, however the court found that other than a few items, defendants did not even sell Italian food. Thus the relative quality of the products was not a significant factor and it was unlikely that even an unsophisticated buyer would be confused as to the source of the products.
In the end, the court held these facts factored the defendants, and thus dismissed plaintiff’s claims for trademark infringement and unfair competition. Unable to find evidence in the record suggesting risk of harm to the public, the court further dismissed plaintiff’s claim for unfair business practices.
Upshot: To be successful on trademark infringement and unfair competition claims, a plaintiff needs to show a defendant has more than a similar name and operating in the same general industry. Rather, a plaintiff needs to be ready to withstand the scrutiny of an eight-factored test to establish defendant’s use of the mark is likely to cause consumer confusion.
 Defendants are two corporations, RAGF Food Corp. (“RAGF”) who operate Mannino’s Bagel Bakery in Freeport, New York, and ARF Food Corp. (“ARF”) who operate Mannino’s Bagel Bakery in Smithtown, New York.
 The law of trademark infringement is part of the law of unfair competition and the same test is applied in determining each claim.
 These factors originate from Polaroid Corp v Polarad Elecs Corp.