By: Mark R. Malek
Walgreens filed a trademark infringement lawsuit against Wegmans Food Markets over use of a “W” logo that Walgreens alleged to be so similar in nature that it would likely cause consumer confusion with the “W” logo that was registered as a trademark to Walgreens. The claim was recently settled, and Wegmans has agreed not to use the “W” logo (source).
In a trademark infringement lawsuit, there is not necessarily a need to prove that actual confusion exists. In other words, there is no need to show that one consumer was confused as to the source of the goods and services being offered. Instead, there is a test that can be applied with several factors in order to determine whether or not there is a “likelihood of confusion.” I came across a good post that points out the test for determining whether or not there exists a likelihood of confusion. The very best quote in this post notes that when “determining likelihood of confusion, courts evaluate several factors. No one factor is determinative in and of itself, and how important one factor is over another is very case specific.” Now you can understand why litigation takes so very long and can be so very expensive. While one side may be arguing the merits and strengths of some of the factors, the other side is arguing how the other factors are not met and that, therefore, there is no infringement.
The factors that are analyzed include whether or not the marks compete with one another, whether or not they are used in the same channels of trade, whether or not the goods are closely related, whether or not the infringer intended to mislead the consumer, the similarity of the marks, whether or not the customers of the company are overlapping and whether or not there has been actual confusion. Although actual confusion is only one of the factors, I believe it to be somewhat important. Then again, there is not likely to be actual confusion standing alone, and only one instance of actual confusion is likely not enough to win the day.
Wegmans probably made a good choice. There has to be a business decision that was made at some point. I suspect that in the not too recent past, Wegmans, like many companies nowadays, went through some sort of marketing overhaul and someone probably suggested that it may be time to “update the logo.” I also suspect that the person who suggested such a thing was shot down pretty quickly. Now, Wegmans can revisit the rebranding. All in all, this will probably wind up being a good thing for Wegmans – gives them a chance to “reinvent” themselves. Please stay tuned – I will post more articles on the tests necessary to prove trademark infringement.