Trademark law protects the name, logo, slogan, packaging and other identifying features that brands use to distinguish their goods or services from the goods and services of others.
Not all trademarks, however, are entitled to protection. If you believe that another party is using your trademark, or a confusingly similar trademark, without your permission or if you are accused of infringement, it is important to understand this area of law.
What Is Trademark Infringement?
Trademark infringement is the unauthorized use of another party’s valid and protectable trademark. To successfully prevail on a trademark claim, a plaintiff must prove that (1) it owns a valid and protectable trademark and (2) there is a likelihood of consumer confusion from the alleged infringer’s use of the trademark at issue.
What is a Valid Trademark?
A trademark can be any word, symbol, design, or combination thereof that identifies the source of your goods or services. A valid trademark is a mark that is used in commerce, meaning the trademark owner consistently uses the mark in interstate commerce to identify the goods or services. The owner must have actually used the mark in the ordinary course of trade. Token or sham use of a trademark, such as a single sale of the goods, is insufficient.
Additionally, a valid trademark must be distinctive. Distinctiveness addresses a mark’s strength and capability of being used as a source identifier.
Is There a Likelihood of Confusion?
Federal courts located in New York balance eight factors to determine whether there is a likelihood of confusion between trademarks. These factors include:
- The strength of the plaintiff’s mark. Is the mark distinctive or has it acquired a secondary meaning in the marketplace?
- The degree of similarity between the two marks. Are the marks substantially similar?
- The proximity of the products. Are the products or services using the marks similar to each other?
- The likelihood that the owner will bridge the gap. What is the chance that the alleged infringer will expand further into the industry/type of product or service of the owner?
- Evidence of actual confusion. Is there evidence from surveys that customers are confused about the source of the goods or services?
- Defendant’s good faith in adopting the mark. Did the alleged infringer adopt the mark in bad faith?
- The quality of defendant’s product. Is the infringer’s product or service of lower or higher quality?
- The sophistication of the consumers. Are buyers likely to be confused based on their level of sophistication in discerning the difference between the product or service?
The focus of this inquiry is whether consumers are confused as to the source of the goods or services under the circumstances.
Are There Other Ways to Protect Your Brand?
Businesses should always look to protect their trademarks using every means available to them. Trademark owners have a duty to police their marks – if the mark becomes generic, it can be cancelled. An attorney can help determine what you need for your business.
If you think your mark is being infringed, it is important to act quickly. You may lose your rights if you do not proactively stop the infringing conduct of others. Speak to an experienced lawyer for assistance.
This Blog is made available by Romano Law PLLC for general informational and educational purposes only, not to provide specific legal advice. By using this Blog you understand that there is no attorney client relationship between you and Romano Law PLLC or any individual contributor. You should consult a licensed professional attorney for individual advice regarding your own situation.