In our last article (How Do I Actually Get A Trademark?), we talked about the relevant procedural and substantive requirements of the trademark application process. Now, we want to make some specific points about trademark infringement. Business owners need to know exactly when their marks are being infringed so that they can respond accordingly.
Trademark infringement is generally when someone uses the mark(s) of another. However, there are three specific components that must be established to claim infringement:
The general analysis that courts use to identify infringement is referred to as the “likelihood of confusion” test. This asks whether two marks are so similar that consumers would be confused regarding their origins.
On a case-by-case basis, courts will determine if the mark of one party infringes on the mark of another through consumer confusion. They normally use a variety of factors in making this decision such as the following:
Courts may use other factors in this analysis. Additionally, they may weigh the quality and quantity of evidence to analyze the existence of trademark infringement.
Examples of trademark infringement scenarios would include the use of the Nike swoosh symbol or a coffee company called “Starbux” in the sale of goods/services. Both would clearly create confusion as to the source of the goods or services because consumers might think the items came from Nike or Starbucks. Trademark law would allow you to stop the use of both offending marks because of the confusion they generate.
For more information, see 15 U.S.C. §§1114, 1125; Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961).
No. Trademark dilution is when a mark loses value or distinctiveness through the use of another mark. If you properly secure a trademark, the rights afforded in that registration will allow you to stop this from happening by prohibiting the use of the offending mark.
To establish trademark dilution in federal courts, you must show that the offended mark is “famous” and courts use a variety of factors to reach this conclusion including the following: uniqueness, length of use, market location, advertising operations, distribution channels, brand identity, applicable registrations, and others. To establish trademark dilution in state courts, you must show that the offended mark had some form of commercial power or uniqueness and that the two marks are very similar. You do not need to prove the offended mark is “famous” in state courts typically.
Once these procedural thresholds are met, you must still show that your mark was diluted. Generally, courts accept either “tarnishment” or “blurring” claims. The former occurs when the use of a mark negatively reflects upon a registered mark and puts it in a bad light. The latter happens when the use of a mark reduces the unique quality of a registered mark.
For more information, see 15 U.S.C. §1125(c); Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026 (2d Cir. 1989).
In the next article, we discuss what you can do if your trademark is infringed or diluted.
Next: What can I do if my trademark is being infringed?© 2016 John V. Robinson, P.C.
© 2016 John V. Robinson, P.C.
