Prime, Inc. is one of the nation’s largest trucking companies. On July 2nd, Prime filed a trademark infringement action against Amazon for using the word “Prime” on its commercial vehicles.
Prime Inc. alleges that Amazon’s use of its Amazon Prime logo has caused “irreparable damage to its business, reputation, and goodwill.” The trucking company has reportedly used the word “Prime” on its semi-trailers continuously since 1980.
Digits of confusion
“In a trademark infringement action, the paramount question is whether one mark is likely to cause confusion with another.”1 To determine whether confusion is likely between two marks, a number of “digits of confusion,”2 are examined:
- The type of marks in question;
- Similarities between the marks;
- Similarities between products or services;
- Identity of the retail outlets and purchasers;
- Advertising media used;
- Defendant’s intent;
- Evidence of actual confusion; and
- Degree of care by potential purchasers.
Is confusion likely?
While both companies offer freight services, it appears their clients are significantly different. In most cases, Prime, Inc.’s clients are seeking transportation of large commercial shipments, while Amazon’s customers operate on a smaller scale. For the purposes of trademark, however, both companies offer services that fall under Class 39 services.
Initially, Amazon used “prime” to set apart a higher level of services for members and did not start using the logo on shipping vehicles until about 2016 or 2017.3Although, the two logos may use the same word, they use different fonts, color schemes and accompanying graphics.4 Despite the differences, however, Prime, Inc. has noted some instances of actual confusion for their shipping customers.5
When one company infringes on another’s trademark, it often means stopping all use of the mark in question as well as payment of damages. In this case, Amazon could be required to stop using the “Prime” mark with regard to their shipping services.
1 Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 226 (5th Cir. 2009)
2 See Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 226 (5th Cir. 2009).
3 Complaint at 48, New Prime, Inc., d/b/a Prime, Inc., v. Amazon Technologies, Inc., (8th Cir.) (No. 6:19-cv-3236).
4 Complaint at 2, 42, New Prime, Inc., d/b/a Prime, Inc., v. Amazon Technologies, Inc., (8th Cir.) (No. 6:19-cv-3236).
5 Complaint at 54, New Prime, Inc., d/b/a Prime, Inc., v. Amazon Technologies, Inc., (8th Cir.) (No. 6:19-cv-3236).