Guides · Trademark Litigation
Likelihood of Confusion in the Fifth Circuit
Most trademark cases are decided on one question: are buyers likely to be confused about who makes or sponsors the goods or services?
· Law checked through October 20, 2026
In Short
Most trademark cases are decided on one question: are buyers likely to be confused about who makes or sponsors the goods or services? Federal courts in Texas answer it by weighing eight "digits of confusion." No single digit controls, and courts look at how the marks are actually encountered in the market. In the Fifth Circuit the answer is a question of fact, which often makes it a jury question, and the Supreme Court is now considering whether one digit, the strength of the mark, is a fact question.
Common situations.
- Two Texas businesses share a word in their names and serve overlapping customers.
- A competitor buys another company's name as a search-engine keyword.
- A small company with an earlier mark is overwhelmed by a larger company's later use of a similar one.
- A school's colors and logos appear on unlicensed merchandise.
The digits of confusion.
| Digit | What courts look at |
|---|---|
| 1. Type (strength) of the mark | Where the mark falls on the distinctiveness spectrum, and its commercial strength. Widespread third-party use of the same word weakens a mark |
| 2. Similarity of the marks | Overall appearance, sound, and meaning, as encountered in the market, not side by side |
| 3. Similarity of the products or services | Whether buyers would expect them to come from the same source, including likely expansion |
| 4. Identity of retail outlets and purchasers | Overlap in sales channels and customers |
| 5. Identity of advertising media | Overlap in where the parties advertise |
| 6. Defendant's intent | Whether the defendant meant to trade on the plaintiff's goodwill; good faith does not excuse confusion |
| 7. Evidence of actual confusion | Often called the best evidence, though not required |
| 8. Degree of care by purchasers | Careful buyers of expensive goods are less likely to be confused than impulse buyers |
Sources: Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998); Streamline Prod. Sys., Inc. v. Streamline Mfg., Inc., 851 F.3d 440 (5th Cir. 2017).
Evidence.
Actual confusion. Misdirected purchases are the strongest evidence. Inquiries about affiliation and misdirected calls count for less, especially when isolated and set against the parties' total sales, but they are still relevant and can let a case reach a jury (Rex Real Estate I, L.P. v. Rex Real Estate Exch., Inc., 80 F.4th 607 (5th Cir. 2023)). Fleeting mix-ups of names that the defendant's mark did not cause carry little weight (Rampart Res., Inc. v. Rampart/Wurth Holding, Inc., No. 24-30111 (5th Cir. Feb. 24, 2025) (affirming denial of a preliminary injunction)).
Surveys. Consumer surveys are common and are tested for whether they replicate market conditions. An Eveready-style survey, which asks who makes the defendant's product without showing the plaintiff's, suits strong marks. A Squirt-style survey, which shows both products, is suited to goods sold side by side. In a 2024 tequila case, a Houston federal court relied on the defendant's Eveready survey and rejected the plaintiff's Squirt survey because the products were not shelved together, and found no likely confusion between CASA AZUL and CLASE AZUL (Casa Tradicion, S.A. de C.V. v. Casa Azul Spirits, LLC, No. 4:22-cv-02972 (S.D. Tex. Apr. 15, 2024)). The ruling was appealed to the Fifth Circuit (No. 24-20255).
Other forms of confusion.
- Sponsorship or affiliation. Confusion about whether the plaintiff approved or is connected with the defendant's goods counts. The Fifth Circuit upheld liability for unlicensed shirts using universities' colors and indicia (Bd. of Supervisors for La. State Univ. v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008)).
- Initial interest confusion and keyword ads. Confusion that draws a buyer in, even if dispelled before purchase, can support a claim. The Fifth Circuit held that a law firm adequately alleged confusion where a competitor bought its names as search keywords and used generic ads and call-center practices that left callers believing they had reached the firm (Jim S. Adler, P.C. v. McNeil Consultants, L.L.C., 10 F.4th 422 (5th Cir. 2021)). Buying a keyword alone is not enough.
- Reverse confusion. A larger later user can swamp a smaller earlier user, leading buyers to think the earlier user's goods come from the larger company.
Hypothetical
A worked example.
Suppose "Lone Oak Coffee," a San Antonio café open since 2015 with a federal registration, sues "Lone Oak Roasters," which began selling packaged coffee online and in Austin grocery stores in 2024.
- Strength: "Lone Oak" is arbitrary for coffee, but several Texas businesses use it, which weakens it.
- Similarity: The dominant words are identical; logos differ.
- Products: Brewed coffee and packaged beans are closely related; cafés often sell beans.
- Outlets and buyers: Partly overlapping; both reach Texas coffee buyers, though through different channels.
- Advertising: Both use Instagram and local food media.
- Intent: No evidence the roaster knew of the café.
- Actual confusion: Two customers asked the café whether it sells its beans at the grocery store.
- Purchaser care: Low; coffee is an inexpensive, frequent purchase.
Most digits favor the café, though weakness from third-party use and the absence of bad intent cut the other way. On facts like these, a court could find likely confusion, and the question could go to a jury.
How other circuits compare.
Other circuits use similar multi-factor tests: the Second Circuit's Polaroid factors (Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961)) and the Ninth Circuit's Sleekcraft factors (AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979)). The factors largely overlap. Circuits differ on whether likelihood of confusion, and its parts, are questions of fact or law. The Supreme Court will decide whether mark strength is a question of fact in RiseandShine Corp. v. PepsiCo, Inc., No. 24-1016 (cert. granted June 29, 2026), a case from the Second Circuit, which treats strength as a legal question.
Sources.
- Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998).
- Streamline Prod. Sys., Inc. v. Streamline Mfg., Inc., 851 F.3d 440 (5th Cir. 2017).
- Rex Real Estate I, L.P. v. Rex Real Estate Exch., Inc., 80 F.4th 607 (5th Cir. 2023).
- Rampart Res., Inc. v. Rampart/Wurth Holding, Inc., No. 24-30111 (5th Cir. Feb. 24, 2025).
- Casa Tradicion, S.A. de C.V. v. Casa Azul Spirits, LLC, No. 4:22-cv-02972 (S.D. Tex. Apr. 15, 2024).
- Bd. of Supervisors for La. State Univ. v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008).
- Jim S. Adler, P.C. v. McNeil Consultants, L.L.C., 10 F.4th 422 (5th Cir. 2021).
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).
- RiseandShine Corp. v. PepsiCo, Inc., No. 24-1016 (U.S. cert. granted June 29, 2026).
This guide is general information, not legal advice. Law checked through October 20, 2026. See the Disclaimer.