• Trademark Infringement

    Trademark Infringement

    The scope of trademark rights is limited to its use in commerce. An action for infringement of a trademark is thus limited to instances where the allegedly infringing use is likely to cause consumer confusion or cause dilution of the value of the mark. Proving a claim based on consumer confusion requires proving that the defendant has used the mark in such a way that a consumer will be confused as to the source of the goods. Proving a claim for dilution requires showing that the defendant’s use of a famous mark is lessening the capacity of the mark to identify or distinguish the goods of its owner.

    Trademarks are a limited form of property designed to help consumers identify the source of goods or services, and to protect the reputation and good-will of the same. Trademark rights do not exist independently from their use in connection with goods and services, thus the only uses that can infringe upon that right are those that confound the purpose of trademarks. In other words, because trademarks rights do not exist outside of their capacity for identifying the origin of goods the only conduct that can interfere with that right is conduct interferes with the ability of the mark to identify its owner. This kind of conduct is broken into the two major categories of trademark infringement: consumer confusion and dilution.

    Consumer confusion based liability is predicated on there being a use of the mark that causes confusion in the mind of the public. The use requirement in the confusion context is different from the use required to acquire trademark rights in the first place. There is no need to establish an actual use in commerce by a showing of sales, shipments, or advertising. Any use that tends to cause confusion is considered sufficient. While the use requirement is technically distinct from the confusion requirement, since courts read use to include any use causing confusion, the factual inquiry into use is subsumed by the factual inquiry into whether there is confusion.

    The existence of confusion is based in a variety of multi-factor tests, depending on the jurisdiction. Every Circuit in the Federal Courts of Appeals has its own multi-factor test for determining whether there is a likelihood of consumer confusion. It is important to note that the standard is likelihood of confusion and not a certainty or mere possibility. In any event, the various tests all have certain common features addressing certain aspects of confusion. Each of the tests has several factors addressing the nature of the mark itself, the nature of the underlying goods or services, and the nature of the consumers.

    The primary inquiry is into the nature of the mark, which requires a comparison between the marks. If the marks are so similar that the public would confuse the two then the defendant’s use is likely infringing. The similarities of the mark are often judged by their relative conceptual and commercial strengths. Conceptual strength is based on whether the marks are inherently distinctive, or whether they leave an impression distinct from the goods. Commercial strength is based on an assessment of the public’s view of the mark, or whether the mark has achieved fame amongst the public. The marks are also compared for similarities in sight, sound, and meaning, or whether they are so alike that the public could not distinguish between them or would assume they are related.

    Another set of common questions involve the nature of the goods or services. This category asks whether the parties are involved in selling the same or similar goods, or whether the senior user is likely to expand into the market of the junior user. The closer the gap between the two products the more likely a court will find similar marks to be confusing to the public.

    The last major question is the nature of the consumer. If the product is of the kind that consumers are likely to purchase without much thought, like a grocery check-out-line impulse buy, then the court is more likely to find a likelihood of confusion. Where the consumers are more sophisticated, or where the product is one where purchase is traditionally given more thought, the court is less likely to find a likelihood of confusion. Courts also tend to give tremendous weight to the intent of the defendant user in these factors. Where the defendant user has acted to capitalize on the good name of the plaintiff, and thereby impliedly attempted to trick consumers, the courts are much more likely to find a likelihood of confusion.

    There are no particular borders to when or where confusion can occur. There is no doubt that confusion can occur at the point of sale, but confusion can also occur before and after the sale. Pre-Sale confusion, or initial interest confusion occurs when a consumer desires and thinks they have found the goods or services of A, but instead find the goods or services of B. For instance, let’s say a person wants “McDonalds” fast-food and spots a sign looking like McDonalds’ trademark, but upon closer inspection that it is another fast-food restaurant called “McDowels”. If the consumer then chooses “McDowels” then there has been an initial interest confusion because the consumer only came to that business under the impression that it was “McDonalds.” Post-sale confusion involves the confusion of people other than the actual purchaser. If the use of mark would cause people to associate the defendant’s goods with the plaintiff’s after the initial purchase it is infringement.

    An action for dilution is based on the premise that the value of a trademark can be lost even if there is no competition or likelihood of confusion. The owner of a famous trademark may enjoin the use of their mark if there is a likelihood of dilution by blurring or tarnishment of the famous mark. Whether a mark is famous depends on a number of possible factors including the duration, extent, and geographic reach of advertising or sales or use, and the extent of the actual recognition of the mark. Blurring is when there is an association arising from a similarity between the marks that could impair the distinctiveness of the mark. Tarnishment occurs when the defendant’s mark is similar and such use could harm the reputation of the mark. The law governing dilution is purely statutory and was written expressly to protect the interests of the owners of famous marks. The language of the statute weights heavily in favor of the owners of famous marks. In other words, actions for dilution are fairly easy to prevail on.
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