Examples of trademark infringement cases include instances in which one company sues because it contends that another company is profiting from its trademark without approval. The first business that used the trademark for commerce, known as the senior user, must prove that the alleged infringer — the junior user — is using a similar trademark in a way that will likely cause marketplace confusion. The standard is whether consumers of the goods in question will probably be confused by the infringement in question.

A Note on Patents, Trademarks, and Copyrights

Intellectual property owners can protect their ideas and creations with three different legal tools: trademarks, patents, and copyrights. These legal rights are claimed in different ways and managed by different government agencies.

  • Patents. Patent rights, managed by the United States Patent and Trademark Office (USPTO), are granted for an invention for a specific amount of time, in exchange for an application that publicly details the creation.
  • Copyrights. Copyrights protect creations such as art, music, and literature, provided these works are tangible. These rights are granted and managed by the U.S. Copyright Office.
  • Trademarks. A trademark is a symbol, logo, design, word, or phrase that represents a brand. Trademarks receive legal protection from use nationwide when they are registered. More than 455,000 trademark applications were processed by the USTPO in 2014 alone. Trademarks protect business plans and brands from competitors. Trademark infringement is common, and it is not always legally prosecuted.

Marvel and DC Comics Control of 'Superhero'

The term "superhero" is trademarked by two companies: DC Comics and Marvel Comics. Each pursues aggressive legal action when other comic book publishers use this term. Critics of the practice have denounced these companies as trademark bullies, but other publishers have not yet contested their ownership of the term. Others think that the value of the trademark is not worth the hostility from independent publishers and the expense of lawsuits.

Apple Corps v. Apple Inc.

Two major institutions have battled over the trademark "apple" for decades. The Beatles founded the Apple Corps music company eight years before Apple Inc. was founded by Steve Jobs. When the latter was first sued by the Beatles, Jobs agreed not to enter the music business and paid a cash settlement. However, Apple Inc. was sued again after it introduced iTunes. That lawsuit was resolved when Jobs agreed to purchase the trademark rights from Apple Corps and then sublet them back.

Washington Redskins

This NFL team lost their team name trademark recently after the USPTO ruled that the name was insensitive to Native Americans. As a result, the team can no longer sue those who create and sell counterfeit Redskins merchandise. The Redskins organization has appealed. Those considering a trademark should extensively research the history of the word or phrase to ensure they won't need to change it later.

Wrigley's Doublemint

Although the Wrigley Company tried to trademark "Doublemint" as the name of its chewing gum, it was unable to do so in Europe because it was decided that the name was not creative enough. The Madrid Protocol details the laws for registering and enforcing trademarks in the European Union.

Jack Daniels and Patrick Wensink

Author Patrick Wensink received a cease-and-desist letter from distiller Jack Daniels after his book was released with a cover resembling the Jack Daniels' trademark. Instead of legal threats, however, the letter had a pleasant tone and indicated the company's willingness to contribute to the cost of changing the cover. The company received tons of positive PR after Wensink posted the letter online.

The Polaroid Factors

In trademark infringement cases, courts rely on a set of standards to determine whether consumers will likely be confused. These are sometimes called the Polaroid factors because they come from a 1961 case in which the Polaroid Corp. defended its trademark. The Polaroid factors include the following:

  • How distinctive the senior user's mark is.
  • The level of similarity between the trademarks in question.
  • The level of similarity between the products or services the trademarks in question represent.
  • The chance that the senior user will eventually expand further into the industry of the junior user.
  • Whether the junior user adopted the mark in bad faith.
  • Actual evidence that customers have been confused by the similar marks.
  • The level of buyer sophistication in the marketplace in question.
  • The comparative quality of the users' products and services.

Breaking Down the Factors

The courts in the United States will use a multifactor analysis when making a decision regarding possible confusion in a trademark case. While each court may have slightly different factors, they are similar in the fact that they relate in some way to how consumers perceive their product. Factors that courts will consider include:

  • The strength of the mark. A mark is considered strong when it has gained a sufficient secondary meaning. If a mark is weak and non-descriptive it can be considered at a higher risk to cause confusion.
  • The similarity between the marks. When considering the similarity between the two marks, they must be compared in their entirety. This often includes checking the sound, connotation, and appearance of both. If the marks are deemed to be similar in many aspects the court may rule that they are too similar and likely to cause confusion between customers.
  • The similarity between the goods. The basis for infringement is that a consumer may mistakenly purchase one item thinking that they were purchasing another. Therefore, for a case trademark infringement to occur, the products must be similar enough that similar trademarks could cause confusion. For example, the bleach called Clorit could be easily confused with Clorox bleach, though Lexus cars and Lexis computer database services are not likely to be confused.
  • The degree of care that is exercised by the consumer. This factor will vary depending on the item purchased. For example, when consumers make a large or expensive purchase they are more likely to watch closely and not be confused by marks that might be similar. Therefore, for large-ticket or more expensive items, the court may require more evidence to prove that the consumer is still likely to be confused.

Trademark Infringement Cases

Even though the definitions of infringement vary in the United States as well as around the world, all companies run the risk of being taken to court if it's possible that their trademarks can be confused with another company's. The likelihood also increases in cases where the products are similar or they use a similar purchasing channel.

The truth is that most companies want to avoid a trademark infringement case — they can be lengthy, costly, and not always have the desired outcome. A trademark lawsuit can cost anywhere between $120,000 and $750,000 and often take years to fully resolve.

Even though large corporations aren't as likely to face trademark infringement litigation, when it does occur, they are most likely to suffer some type of loss of image. Some court cases involving trademark infringements suits with large companies include:

  • 3M v. 3N - Even though the products were somewhat dissimilar, the notoriety of 3M and the fact that 3N was able to acquire customers and make a profit off of a similar mark constituted infringement.
  • D2 Holding v. "House of Cards" - D2 Holdings filed a case against MRC II Distribution Co., which brought the series "House of Cards" to Netflix. D2 has held the trademark "House of Cards" since 2009 to use for entertainment services and goods. In its request, it is asking for multiple cease-and-desists, including on items such as fan merchandise. Since MRC had filed for a trademark with the USPTO and failed, it is likely it knew that the trademark was currently held.
  • Academy of Motion Picture Arts and Sciences v. GoDaddy - A legal battle between the academy and the domain retailer GoDaddy over cybersquatting is about to come to an end. The lawsuit was a result of GoDaddy allowing confusingly similar domain names such as 2011Oscars.com. While the academy claimed that GoDaddy allowed this to earn a profit off the sites, the court ruled that GoDaddy did not profit in bad faith.
  • Louis Vuitton v. Louis Vuiton Dak - In this case, a fried chicken restaurant in South Korea shocking lost a trademark battle with Louis Vuitton due to the name being similar to the designer's trademark. Not only the name was similar, but the packaging and logo were, too.
  • Adidas v. Forever 21 - Adidas has filed a suit against clothing retailer Forever 21, claiming that the retailer's three-stripe design on products constitutes a counterfeit product. Adidas claims it has put millions into branding the three-stripe design and holds numerous patents on it.

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