Trademark Infringement

To establish a trademark infringement claim, there must be proof that (1) the trademark owner owns a valid and protectable trademark, and (2) there is a likelihood of confusion from the alleged infringer’s use of the owner’s mark in commerce.

The first part of the test determines whether the plaintiff has the right to make a complaint.  Not all marks used by a brand are trademarkable.  Trademark registration provides the benefit of helping a business establish that its mark is enforceable.

The second part of the test addresses how the alleged infringer is using the mark.  Some uses of a mark do not constitute infringement, such as those considered fair use or parody, as discussed further below.

The use “in commerce” requirement means that the alleged infringer’s use must have a substantial effect on interstate commerce.  For example, if the alleged infringer advertises across state lines, that is considered use in commerce.

The alleged infringer’s use also must result in a likelihood of confusion, which generally looks at whether a consumer would assume the product or service offered by the alleged infringer is associated with the plaintiff.  If the trademark in question is both so sufficiently similar from the plaintiff’s and in direct competition for sales with the plaintiff’s services or goods, then courts are likely to find a likelihood of consumer confusion.  But, if the services or goods in question are similar but not in direct competition with each other, then courts will consider various other factors when determining a likelihood of confusion.

Courts analyze eight factors to determine whether there is a likelihood of confusion as to the source of goods or services.  These factors are known as the Polaroid factors, which are:

1.     Strength of the trademark owner’s mark;
2.     Similarity between the trademark owner’s mark and the alleged infringer’s mark;
3.     Proximity of the products and competition with one another;
4.     The trademark owner’s likelihood of expanding or entering into the alleged infringer’s related market (bridging the gap);
5.     Evidence of actual confusion by consumers;
6.     Alleged infringer used the mark in bad faith;
7.     The quality of the products or services of both parties; and
8.     The sophistication of the consumers in the relevant markets.

Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).

How these factors are weighed vary, but the focus is always on whether a consumer would reasonably be confused under the circumstances.

There are several defenses to trademark infringement.  As noted previously, the trademark must be valid and enforceable, so an alleged infringer may defend against infringement by contesting the validity of the trademark.  The Lanham Act also allows the following defenses:

1.     The registration or the right to use the mark was obtained fraudulently;
2.     The mark has been abandoned by the plaintiff;
3.     The mark is being used with permission of the plaintiff;
4.     The mark is descriptive of the product or service and is therefore not protected under the Lanham Act;
5.     The mark was used by the alleged infringer without knowledge of the plaintiff’s prior use, before the date the mark was registered with the USPTO;
6.     The mark has been or is being used to violate antitrust laws;
7.     That equitable principles, including laches, estoppel and acquiescence, are applicable.

In addition, the affirmative defenses of fair use (or nominative use) and parody are available.

Fair Use or Nominal Use

The Fair Use Doctrine allows a party to use a trademark as a descriptive term, rather than for its association with a brand, goods or services. Such use only incidentally or nominally involves the use of a trademark and consumer confusion is unlikely. Fair use may also apply where the trademark is used in the context of commentary or criticism.

Parody

Artistic or editorial parody may be allowed so long as it is not closely tied to commercial use and its existence clearly will not lead to confusion. The more a parody seeks to leverage an owner’s trademark for commercial purposes, the more likely it will constitute infringement.

Trademark law also protects owners from third party use of their marks by blurring or tarnishing, which dilutes the value of the trademark. Trademark infringement and dilution can seem similar in the sense that a business is using a similar trademark as another business. However, there are key differences between the two. For instance, trademark dilution only applies to “famous” marks. There is no need to show a likelihood of consumer confusion in a dilution claim. Moreover, the goods or services sold by the alleged diluter do not need to be in competition or bear similarity with the trademark owner.

Courts will look at several factors in determining whether a mark is famous, including:

1.     The duration, extent and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties;
2.     The amount, volume and geographic extent of sales of goods or services offered under the mark;
3.     The extent of actual recognition of the mark;
4.     Whether the mark is registered.

Assuming a mark is famous, then the owner can sue for dilution by “blurring” or “tarnishment.”  Blurring occurs when the distinctiveness of the brand is impaired by association with the other party’s use. Tarnishment occurs when a mark similar to a famous trademark harms the reputation of such famous trademark.

Trademark law is confusing, and it is easy to run afoul of the rules. The first step is for business owners to educate themselves on trademark rules. Next is to conduct an online search to determine if anyone has similar marks to the potential ones the business wants to use. An attorney should also be consulted to assist with additional analysis and help register the trademark. As discussed previously, registration is not required but is advisable because it offers various benefits. By being proactive, parties can protect themselves from costly infringement claims.

The Lanham Act provides for both monetary and injunctive relief. A successful plaintiff can obtain damages for their losses as well as receive the alleged infringer’s profits in connection with the infringement. Attorney’s fees may be awarded in certain cases. Treble damages may also be available when the alleged infringer acts intentionally and in bad faith.