Case Briefs
Case(s): Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).
Polaroid Corporation, a Delaware corporation, owner of the trademark Polaroid and holder of 22 United States registrations thereof granted between 1936 and 1956 and of a New York registration granted in 1950, filed suit in the Eastern District of New York, alleging that defendant’s use of the name Polarad as a trademark and as part of defendant’s corporate title infringed plaintiff’s Federal and state trademarks and constituted unfair competition. It sought a broad injunction and an accounting. Defendant’s answer, in addition to denying the allegations of the complaint, sought a declaratory judgment establishing defendant’s right to use Polarad in the business in which defendant was engaged, an injunction against plaintiff’s use of Polaroid in the television and electronics fields, and other relief.
The district court dismissed both Polaroid’s claim and Polarad’s counterclaims, concluding that neither plaintiff nor defendant had made an adequate showing with respect to confusion and that both had been guilty of laches.
Both parties appealed, with the defendant ultimately, withdrawing its cross-appeal.
Second Circuit Decision & Polaroid Factors
The Second Circuit ruled in favor of the plaintiff, finding that the defendant’s use of the mark “Polarad” was likely to cause confusion with the plaintiff’s well-established mark “Polaroid.” The court emphasized that the marks were visually and phonetically similar and that the parties’ products, despite being in different industries, could potentially overlap in sales channels, given the broad scope of both companies’ business activities.
When determining likelihood of confusion, courts in the Second Circuit use factors derived from this case. These factors, sometimes known as the “Polaroid factors,” include …
(1) Strength of the senior user’s mark. The stronger or more distinctive the senior user’s mark, the more likely the confusion;
(2) Similarity of the marks. The more similarity between the two marks, the more likely the confusion;
(3) Similarity of the products or services. The more that the senior and junior user’s goods or services are related, the more likely the confusion;
(4) Likelihood that the senior user will bridge the gap. If it is probable that the senior user will expand into the junior user’s product area, the more likely there will be confusion;
(5) The junior user’s intent in adopting the mark. If the junior user adopted the mark in bad faith, confusion is more likely;
(6) Evidence of actual confusion. Proof of consumer confusion is not required, but when the trademark owner can show that the average reasonably prudent consumer is confused, it is powerful evidence of infringement;
(7) Sophistication of the buyers. The less sophisticated the purchaser, the more likely the confusion; and
(8) Quality of the junior user’s products or services. In some cases, the lesser the quality of the junior user’s goods, the more harm is likely from consumer confusion.