• We have and continue to handle many trademark infringement cases. To determine if it is a trademark infringement, the courts look at the following factors:
    1. the strength of the mark;
    2. the degree of similarity between the two marks;
    3. the proximity of the products;
    4. the likelihood that the prior owner will bridge the gap;
    5. actual confusion;
    6. defendant's good faith in adopting its own mark;
    7. the quality of defendant's product; and,
    8. the sophistication of the buyers.
    This is not intended to be an exhaustive list, but is merely a starting point. Furthermore, when evaluating the similarity of the marks, the sound, meaning and commercial impression of the marks are evaluated (see factor #2).
    The ultimate test is whether or not consumers are going to be confused.
    There are also additional provisions in the law to remedy
    43(a) Unfair Competition (15 U.S.C. 1125(a)) - Under the Lanham act, unregistered marks are protected as well.
    And trade dress, etc. This provision has far reaching implications and has provided protection for restaurant formats, colors of products, sounds and smells.
    The key difference in proving an infringement of a registered trademark and an unregistered mark is that in the case of an unregistered mark it is necessary to demonstrate that the mark functions as a mark, namely that it has acquired secondary meaning and it indicates source
    There is also protection for famous marks and to prevent dilution of those marks.
    Under the trademark statute there is also the Anticybersquatting Consumer Protection Act also known as the ACPA which permits trademark owners to stop the unlawful misappropriation of domain names by third parties.