Empress Hair Care filed a lawsuit on January 10 in United States District Court of the Southern District of New York alleging trademark infringement and unfair competition. The Texas-based company, specializing in hair products for African American women, alleges Combsâ€™s Sean John Clothing Company ignored its registered trademark of â€œempressâ€ by using â€œempressâ€ as the name of its newest womenâ€™s fragrance.
Empress Hair Care stated in its the lawsuit that Sean John Clothing had knowledge of its trademarks, since a representative of the company offered to buy the rights to the trademark in February 2010 for the right to use â€œempressâ€ as the name of its newest scent. Empress Hair Care rejected this offer because they feared market confusion since both companies reach a similar audience. After the offer was rejected, lawyers for Sean John Clothing tried to register â€œEmpress Sean Johnâ€, but the application was rejected.
Empress Hair Care will be successful in its suit if the court finds that Combesâ€™ company infringed on its registered trademark. Under the Lanham Act, the test for trademark infringement is the â€œlikelihood of confusionâ€ among consumers. 15 U.S.C. Â§Â§ 1051â€“1127. The Ninth Circuit developed an eight-factor test that involves weighing the different factors to determine whether consumer confusion exists. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). The strength of the mark, proximity of the goods, and similarity of the marks are three of the more important factors when determining if a trademark causes consumer confusion, but courts also considers evidence of actual confusion, marketing channels used, sophistication of the products, defendantâ€™s intent, and likelihood of expansion of the product lines.
There is no combination of factors or one factor that is dispositive, which makes it difficult to predict if a court will find consumer confusion that constitutes trademark infringement. A court could find the goods proximate since hair care products and fragrances are similar products or part of the same category of cosmetics. Here the mark, â€œempressâ€, also names products that are used and targeted to the same audience. Â The court might also consider the defendantâ€™s intent. It is unknown if Combsâ€™s company had an intent of causing consumer confusion when it named its fragrance, but the from fact they knew â€œempressâ€ was a registered trademark belonging to the plaintiff, intent could be inferred.