Is Your Trademark Likely to Cause Confusion? The Lapp Test | Internicola Law Firm

The Lapp Test

Is Your Trademark Likely to Cause Confusion? The Lapp Test

In order to establish trademark infringement, a party must demonstrate (a) the trademarks are valid and legally protectable; (b) the trademarks are owned by the plaintiff; and (c) the defendant’s use of the trademark is likely to cause confusion concerning the origin of the goods and services. In a recent decision, the District Court of New Jersey denied a plaintiff’s application for a preliminary injunction relating to causes of action for trademark infringement, trade dress infringement and false designation of origin and unfair competition, all under the Lanham Act, due to the plaintiff’s failure to adequately address the “likelihood of confusion” analysis under the Lapp test.

What Is The Lapp Test?

The Third Circuit determines whether a trademark is likely to cause confusion with another trademark utilizing a ten factor test (the “Lapp test”) which factors include:

  1. The degree of similarity between the trademarks;
  2. The strength of the owner’s trademark;
  3. How careful consumers will be to make a purchasing decision (expense of product, etc.);
  4. The length of time defendant used the trademark without causing confusion;
  5. The intent of the defendant in adopting the trademark;
  6. Evidence of actual confusion;
  7. Whether goods are marketed through same trade channels;
  8. Similarity of target market;
  9. Relationship of goods in the minds of consumers; and
  10. Other factors concerning whether owner of the mark would sell both products.

How Is The Lapp Test Applied?

A plaintiff does not have to prove all ten factors. The courts will use the Lapp factors as a guide of sorts to the likelihood of confusion analysis.

Why Is The Lapp Test Important To Your Organization?

There are a number of reasons why you need to be cognizant of the Lapp test factors as they relate to your organization and competitors. The most important reason why you need to know of the Lapp test factors is litigation avoidance. When choosing your brand at the outset, you or a qualified attorney should analyze your brand as it may relate to your competitors or other organizations. If you believe that your mark may be likely to cause confusion with another trademark, you may want to come up with some other options. Additionally, it is important to know what the courts will look to if you believe that another organization’s mark is confusingly similar to yours before you initiate an action for trademark infringement. Finally, if you do decide to bring an action for trademark/trade dress infringement or similar claims under the Lanham Act, you must be sure that your attorney specifically pleads likelihood of confusion in your papers to avoid dismissal of the claim and denial of your injunctive relief.

Contact us now to discuss your trademark matter with a skilled lawyer at The Internicola Law Firm, P.C.

Learn More About IP

Top Resources for Franchising Your Business

  • videoImg

    Should I Franchise My Business?

    Franchising may be the next big step for your business and brand. So, how do you know whether or not you should franchise your business? How do you know if franchising is right for you? The answer depends on your business, your business goals, your personal goals, your budget and... read more

  • videoImg

    How to Franchise Your Business

    In this guide you’ll learn the basics of franchising, how to franchise your business, and how to win at franchising. We’ll also take a deeper dive into legal requirements for franchising and why they matter, steps to take before and after you launch your franchise, and even some tips on... read more

  • videoImg

    Franchising vs. Licensing Book

    When considering expanding a business both franchising and licensing are possible options. In this guide, you'll learn the differences of franchising and licensing and understand how each will affect you. read more

all guides

  • None right now

all videos

  • videoImg

    Franchising Your Business: Advantages & Disadvantages

    Are you a successful business owner? Are you looking for ways to expand your business? If so, this article will provide the answers you need to decide whether franchising your business is the right step for you. In short, franchising allows you, the franchisor, to create a relationship among several... read more

  • videoImg

    Documents To Start A Franchise

    Under federal law, prior offering or selling a franchise in any state, franchisors are required to disclose a franchise disclosure document (FDD) to their prospective franchisees. In addition to federal law certain states, including the franchise registration states, require that franchisors register their FDD with the state. The legal documentation... read more

  • videoImg

    Is Your Business Franchisable?

    For very good reasons, the questions of “is my business franchisable?” and “can my business be franchised?” come up often. Assuming that you possess the right mindset and franchise goals (a topic that we discuss in a separate article) there are core franchise factors that either your business must possess... read more

all articles

  • videoImg

    Leveraging PR & Digital Media to Jumpstart Franchise Sales

    Key strategies to accelerate franchise growth for startup and emerging franchisors In this webinar, franchise attorney Charles Internicola and Nick Powills, founder of No Limit Agency and 1851 Franchise, discuss key strategies to accelerate franchise growth through PR and digital media. Some topics include: Steps franchisors should take when it... read more

  • videoImg

    Winning Insurance Strategies for Emerging Franchisors with Michael Porpora

    One of the biggest issues for emerging franchisors is not having a plan for insurance and system-wide protection. What do emerging brands need to know when they're starting off, who should they rely on, and how can they plan ahead? Get an insurance game plan to protect your franchise system... read more

  • videoImg

    How to Build a Great Franchise Logo & Brand with Dan Antonelli

    Key strategies for developing the right logo & trade dress to drive franchise growth with branding and design expert Dan Antonelli. Dan is the author of ‘Building a Big Small Business Brand’ and is the creative director of the branding firm KickCharge Creative. Learn how to drive franchise growth and... read more

all webinars

Let's Talk

With services to make your growth strategy simple, cost effective, and with a team excited to help you, let’s talk about how we can help grow your brand. Click on the button below or call us at (800) 976-4904.

Let’s Talk

With services to make your growth strategy simple, cost effective, and with a team excited to help you, let’s talk about how we can help grow your business.

Fill out the following form and we’ll contact you as soon as possible. To reach our team directly, give us a call at (800) 976-4904.


This site is protected by reCAPTCHA and the Google Privacy Policy and Terms of Service apply.

closeIcon