Trademark Infringement

Owners of strong and famous a trademark, a service mark, a trade names or a trade dress have two categories of claims that may be asserted to prevent other businesses from using similar names:

  • Trademark Dilution (compare to “property” protection); and
  • Trademark Infringement and Unfair Competition (compare to “consumer protection”).

Trademark Infringement – Protecting Property

Businesses and organizations invest time, money and effort into developing a brand, product line or a reputation in the industry.  Think of a new start up on the Internet that spends on average $20,000 to $35,000 to get a new web site up, invests another $5,000 to $15,000 in online marketing and spends another $5,000 to $15,000 to successfully implement secure and reliable e-commerce activities via the web site.  More important, that business relies on that web site have a registered and protected mark as valuable intellectual property.

In order to prevail on a claim under federal law, the owner of the mark must prove:

  • Prior rights in a valid mark; and
  • Infringer’s mark is so similar as to create a likelihood of confusion, mistake or deception.

Infringement -- Confusion Factors

The factors to consider in determining the existence of a likelihood of confusion include:

(1)   Fame & strength of distinctiveness of the protected mark;

(2)   Similarity between the protected mark and the allegedly infringing mark;

(3)   Similarity of the products (or services) that the marks identify;

(4)   Similarity of the facilities the two parties use in their business;

(5)   Similarity of the advertising used by the two parties;

(6)   Intent of the alleged infringer; and

(7)   Actual confusion.

Infringement -- Fame & Strength of a Mark

The more distinctive the trademark is, the greater its influence in stimulating sales, its hold on the memory of the purchaser and the likelihood of associating similar designations on other goods with the same source.  Strength of a mark depends upon its classification as generic, descriptive, suggestive, or arbitrary and fanciful.

Infringement -- Commercial Strength

The extent to which mark has been used and advertised is also a factor to be considered in determining the strength of a mark.  The Fourth Circuit upheld a finding that the mark GLASS DOCTOR was commercially strong because the owner “has done extensive national advertising” and “supports a 133-unit franchise.”

Infringement -- Fame

The degree to which a mark has become well-known also influences the strength of a mark.  Brand awareness studies that gauge how well the public recognizes the mark may be helpful.

Other Causes of Action

Although likelihood of confusion and dilution are the two main trademark-related causes of action, there exist a number of additional state-law causes of action under false advertising and state unfair competition law: passing off, contributory passing off, reverse passing off, and misappropriation. These claims might apply if the defendant is using someone else's unregistered trademark to misrepresent her goods or services or suggest an endorsement.

 

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