when compared to the task of proving that another’s use of the trademark is likely to cause confusion to consumers. To conclude that a likelihood of confusion exists, the evidence must show “that numerous ordinary prudent purchasers are likely to be misled or confused as to the source of the product in question because of the entrance in the marketplace of defendant’s [use of the] mark.” Gruner, 991 F.2d at 1077; accord Alpha Indus., Inc. v. Alpha Steel Tube & Shapes, Inc., 616 F.2d 440, 443 (9th Cir.1980). At the time of the alleged infringement, the Urantia Foundation did not have a product that was comparable to the defendant’s computer disks. Therefore, the plaintiff’s product, The URANTIA Book, and the defendant’s product, a computerized version thereof with a concordance, are considered to be “related goods”[1] not “competitive goods.”[2] To determine whether a likelihood of confusion exists between related goods, the following eight factors are evaluated:
| i. | strength of the plaintiff’s mark; |
| ii. | proximity of the goods; |
| iii. | similarity of the marks; |
| iv. | evidence of actual confusion; |
| v. | marketing channels employed; |
| vi. | type of goods and degree of care likely to be exercised by the purchaser; |
| vii. | defendant’s intent in selecting the mark; and |
| viii. | likelihood of expansion in the product lines. |
AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir.1979). The eight factors, however, are not exhaustive, and if the case warrants, other variables may be considered. Id. at 348 n. 11 (citations omitted).
i. strength of mark
The strength of a mark and the degree of protection it will be afforded are determined by the mark’s distinctiveness. There are four categories of distinctiveness: generic, descriptive, suggestive, and arbitrary or fanciful. As discussed, the plaintiff’s trademarks are not generic. Therefore, they must fall into one of the three remaining categories. The plaintiff’s product is a book; it’s trademarks are “URANTIA” and the symbol of three blue concentric circles. Neither trademark, in and of itself, describes or suggests a book, nor is there any evidence that “URANTIA” is a word in any known language. Furthermore, the defendant admits that each of the marks is derived solely from The URANTIA Book. (Def.’s Answer at 10–11, ¶¶38, 42.) “A fanciful mark is a name that is made-up to identify the trademark owner’s product like EXXON for oil products and KODAK for photography products.” Gruner, 991 F.2d at 1076; see also Pacific Telesis, 795 F.Supp. at 981–82 (finding “TELESIS does not describe any characteristics, functions, uses or qualities of telecommunications services. As applied to such services, it is arbitrary.”).
Whether the plaintiff’s marks are considered “arbitrary” or “fanciful” is of little importance, because under either label they are deemed to be a strong mark, and “will be afforded the widest ambit of protection from infringing uses.” AMF, 599 F.2d at 349.
ii. proximity of the goods
“For related goods, the danger presented is that the public will mistakenly assume there is an association between the producers of the related goods, though no such association exists.” Id. at 350. In discussing the proximity of the goods, it is not the physical distance between the goods which is evaluated but how closely the goods approximate each other. The use and function of the two products at issue are similar; using either, a consumer would be able to read the entire Urantia book. Apart from the mode of conveyance, the only significant difference in the two products is the inclusion of a concordance with the defendant’s product. These differences, however, do not dissuade me from finding that the two products
- ↑ Related goods are those goods that would be reasonably perceived by the consuming public to have come from the same source if sold under the same trademark. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 n. 10 (9th Cir.1979).
- ↑ An alleged infringer’s goods will be deemed “competitive goods” when they directly compete for sales with the trademark owner’s goods. Id. at 348.
