What Is Trademark Infringement?

Guest post by Dave Owens, an attorney who lives in the San Francisco Bay Area.

Trademarks are a product of our culture, surrounding us every time we drive down the highway or walk through the aisles of the supermarket.  Since the highway, aisle, or even Google search is cluttered with various trademarks, an intriguing name or symbol might be what lures a potential consumer to your product.

For this reason, an effective trademark is almost essential for your business to thrive. But it is for the same reason that companies want to zealously protect their trademark. Before starting a business, selling a product, or even creating a website, you should first examine whether your mark will likely cause consumer confusion.

What is Consumer Confusion?

To prove trademark infringement, the owner of a trademark must prove that another’s use of a mark creates a likelihood of consumer confusion. The key word is likelihood; a trademark holder does not have to prove that actual confusion occurred.

So what constitutes a likelihood of consumer confusion? Well, it depends.

Note: Anytime a lawyer tells you “it depends” he or she usually means that the courts are unpredictable and/or the law is pretty vague.  In this case both apply.

Jurisdictions have different standards for what constitutes a likelihood of confusion, often with only slight variations. The tests usually contain most or all of the following factors:

  • Strength and weakness of the plaintiff’s mark;
  • Whether the defendant’s use of the mark is the same, similar, or related to the plaintiff’s use of the mark (e.g., it may not be an infringement if the plaintiff uses a mark for a restaurant whereas the defendant uses the mark for an automobile);
  • Similarity of the marks in terms of sight, sound, and meaning;
  • Whether the plaintiff has evidence of any actual confusion;
  • Defendant’s intent in using the mark (e.g. is this a bad faith effort to simply to profit off plaintiff’s mark?);
  • Whether both parties use the same marketing and advertising channels (e.g., are the products or services sold in the same stores or advertised in similar media);
  • Purchaser’s degree of care in making the purchase (e.g., courts generally presume that more care is made for a bigger purchase than a smaller purchase);
  • If the parties sell different types of products, courts will evaluate the likelihood of whether the plaintiff will enter into the defendant’s line of business.

A plaintiff does not need to prove each factor to be successful. Courts will weigh the totality of the factors in making their determination. Of course this unfortunately means that it is harder to gauge whether you are infringing upon another’s trademark.

Steps to Limit Your Risk

Before using your mark, there are a few steps you can take to limit the risk of infringement:

  • Search the USPTO website: Federal registration means that the owner has nationwide rights over their mark and could bring legal action you against even if they are not using the mark in your geographic area.

The United States Patent and Trademark Office allows you to search other federally registered trademarks to see whether your mark is the same or similar to another mark. But just because someone has the same or similar mark does not mean that your mark would necessarily infringe upon theirs. Before further proceeding you should examine whether the use would create a likelihood of confusion (see factors above).

  • Search Your State’s Website: You should check to see whether your mark is already registered in your state. Most states have a system set up similar to the USPTO website that allows you to search for registered trademarks.

If there are marks that are the same or similar to yours, you must examine whether the use would create a likelihood of confusion.

  • Search Google: An owner may still have common law protection if they did not register their mark at the federal or state level. The best way to search this is to do a Google search and to browse through as many pages as possible.

Doing this research beforehand will take time and potentially cost money if you decide to hire an attorney, but a little due diligence can minimize your risk and save you money in the long run.

Dave Owens is an attorney based in the San Francisco Bay Area.  He can be reached at dao1282@gmail.com.

Photo credit: Flickr/Jinx!

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