Key Takeaways:

  • A trademark infringement test evaluates both use in commerce and likelihood of confusion.
  • Automated tools and manual searches can help detect trademark violations early.
  • Monitoring your trademark regularly is critical to protect your brand reputation.
  • Filing a complaint with platforms like Google or pursuing legal action are potential next steps if infringement is found.
  • Trademark search databases such as the USPTO’s TESS system are essential for due diligence.What is a Trademark Infringement Test?

The Trademark Infringement Test determines the likelihood of people confusing two companies with similar marks. If you feel like someone is using your trademark in a way that confuses your customers, there are a few tests to check for Trademark Infringement.

The tests are used as a way to protect the first person who has registered that trademark. The phrase used to decide the outcome is whether there is a "likelihood of confusion" between your business and another. The law is known as the Lanham Act 15 USC1114(a)(1).

There are two main questions that courts ask when testing for Trademark Infringement:

  1. Has the person being accused of trademark infringement used it in commerce?
  2. Does the use of the trademark cause customer confusion?

Testing for "Use in Commerce"

This is the first thing a court looks at in a case of trademark infringement. If they have not used the trademark in buying or selling products or services, then the case will not continue.

Before 2009, a business could buy another company's trademark as a keyword from Google without that company's permission. Then in a case against Google in that same year, it was decided that using another company's trademark to gain customers on Google was considered "use in commerce."

If the court decides that a customer will not confuse the two companies, even though the trademark is being used to buy and sell products, then it is likely not an infringement.

Testing for "Likelihood of Confusion"

Courts use eight tests to decide if there is a chance that customers will confuse the two trademarks. The first five tests are always looked at in trademark infringement cases. If there is still confusion over the case, they will look at the other three tests as well.

These tests were brought about after a court case between Polaroid Corportation and Polarad Electrics Corporation in 1961. They are often called the "Polaroid Factors."

1. Strength of the Trademarks

The trademark given priority is not always the one that was registered first. It could be the one that was used first. It could be the one that has the strongest brand, is famous or well known, is advertised most, or is the most unique.

A court will look at these factors to decide the strength of each trademark:

  • Generic - When people begin using the trademark as a way to describe the product and not the specific brand, the strength of your trademark goes down. For example, calling all bandages "Bandaids" or all tissues "Kleenex."
  • Descriptive - Words that simply describe what it is, what's in it, or what it looks like. If, thanks to your brand, you have given this word a second meaning to customers, then it can still have strength. For Example, Windows (the software company) is a descriptive word, but has a strong trademark because it now has another meaning to people.
  • Suggestive - A suggestive trademark is one that forces people to use their imagination to know what the company is selling. For example, Greyhound (the buses) or Jaguar (the car company) are both suggestive trademarks.
  • Arbitrary - If a company uses a word that has another meaning, but has nothing to do with the product or service that is being sold, it is arbitrary. For example, Apple (the computer company), has nothing to do with the fruit, so it can have a strong trademark.
  • Fanciful - These are trademarks that are made-up words. They have nothing to do with the product or service being sold. Fanciful trademarks are very strong. A good example is Xerox (the copy machine company).

2. Are the Products Related?

This does not necessarily mean that the companies are selling the same things, although that is a factor. There are three ways to determine if the products are likely to be confused:

  • Do the companies sell the same product? If so, confusion is likely.
  • Are the companies related in some way, but selling different products? If so, confusion is possible.
  • The products are completely unrelated. If so, confusion is not likely.

3. How Similar are the Marks?

This is one of the most important questions in court. Do the two marks look or sound the same? When put side-by-side, is it possible that a person might confuse them?

Courts will also look at whether there are other companies in the same industry using similar marks. If everyone selling tires is using similar names, colors, or images, it's unlikely to be considered trademark infringement.

4. Proof of Confusion

Can you can prove that someone has already confused the two trademarks? This could be very important if it has happened several times or has happened recently.

5. Why the Other Person is Using the Mark

Intent does not carry as much weight when deciding an infringement claim. Even if the other company is using a similar trademark, if it does not confuse the public, then the courts will not likely rule that there was infringement.

On the other hand, if a company copies a mark in bad faith to deliberately decieve the market and because they know that the original trademark has value, then they are committing trademark infringement.

6. Where are the Products or Services Being Sold (or Marketed)

If the two companies are selling their products in the same stores or promoting them in the same places, even if the products are different, this could cause confusion for the customer.

7. Who is the Customer?

The "likelihood of confusion" for the customer depends on who the customer is. If companies are selling something technical, like a computer or software, the customer is probably knows which brand they want. The same is true if the product or service has a high price. In these cases, the person buying the product is more likely to do their research. Someone might accidentally buy the wrong shampoo brand because it looks similar to another brand, but it is unlikely that they will accidentally buy the wrong car.

8. Will They Expand Product Lines?

If the two companies are not already competing in the same market, is there a possibility that they will in the future? If either company plans to expand the products that they offer or to start marketing themselves in different regions, this could be a problem.

Red Flags That May Indicate Trademark Infringement

Certain signs may suggest that another party is violating your trademark rights. Watch for these indicators:

  • Sudden Drop in Traffic or Sales: This might occur if a competitor uses a confusingly similar brand.
  • Customer Feedback: Reports that mention being misled or confused by a similar product or company.
  • Copycat Packaging or Marketing: Nearly identical colors, fonts, or slogans are a red flag.
  • Unauthorized Use in Search Advertising: Competitors bidding on your brand name for paid ads can be infringing on your trademark, depending on context.

Detecting these issues early can help prevent further dilution of your brand.

Why is a Trademark Infringement Test Important?

When you register your company's trademark, you work hard to protect its reputation and branding. If someone uses a similar image or name to yours, they may confuse your customers and your customers may buy their products instead.

Trademark Infringement Tests allow the original trademark owner to protect their hard work and success of their business.

How to Search for Existing Trademarks

Before registering a new mark or asserting trademark rights, a thorough search is key to avoid violating another’s rights—and to ensure your own trademark is defensible. Here’s how to begin:

  1. Start with the USPTO’s TESS Database: The Trademark Electronic Search System (TESS) allows you to search for existing marks across various classifications.
  2. Use State Trademark Databases: If you plan to operate in a specific state, check their local trademark registry.
  3. Explore Business Directories and Domain Registries: Names used in business registrations or website URLs may be unregistered trademarks.
  4. Look for Similar Logos or Designs: Visual likeness can be grounds for infringement, so use image recognition tools to compare graphics.
  5. Search International Trademark Databases: Use the WIPO Global Brand Database for global trademark checks if you operate internationally.

What to Do If You Find a Violation

If you detect a potential trademark violation, it’s important to act strategically and in a legally sound manner:

  1. Document the Evidence: Capture screenshots, URLs, timestamps, and any instances of customer confusion.
  2. Compare the Marks Using the Infringement Test: Use the "likelihood of confusion" factors to assess the severity of the violation.
  3. Contact the Infringing Party: Sometimes, a cease and desist letter can resolve the issue without court involvement.
  4. File a Complaint with Online Platforms: Submit trademark complaints to platforms such as Google, Amazon, and Instagram to have infringing content taken down.
  5. Pursue Legal Action: If informal requests fail, consult a trademark attorney to file a lawsuit or claim damages under the Lanham Act.

If you're unsure about your next steps, you can find a qualified trademark attorney through UpCounsel for professional legal guidance.

How to Detect Trademark Violations

Detecting trademark violations early can help businesses prevent reputational damage and loss of customers. There are both proactive and reactive strategies you can use:

Proactive Strategies

  1. Monitor Online Listings and Marketplaces: Regularly check platforms like Amazon, Etsy, and eBay for unauthorized uses of your trademark.
  2. Set Google Alerts: Use Google Alerts to track mentions of your brand or product names.
  3. Use Trademark Monitoring Services: Consider third-party tools like CompuMark, Corsearch, or TrademarkNow that offer automated trademark watch services.
  4. Monitor Social Media and Domain Names: Look for misuse of your brand name or logo in social media handles, hashtags, or domain squatters attempting to profit from your trademark.

Reactive Strategies

  1. Investigate Customer Confusion Reports: Listen to customer complaints or inquiries that mention a similar brand or logo.
  2. Conduct Reverse Image Searches: Tools like Google Image Search can help locate unauthorized visual use of your logo or branding.
  3. Review Competitor Advertising: Misleading comparative ads or copycat branding in sponsored posts may signal infringement.
  4. Search Trademark Databases: Use the USPTO’s Trademark Electronic Search System (TESS) to identify filings that are similar to yours.

What if I don't have proof of actual confusion?

While actual proof of customer confusion can strengthen your trademark infringement case, it is not required to prevail in court. Courts primarily consider whether there is a likelihood of confusion, which can be supported through circumstantial evidence or expert analysis. If you suspect infringement but lack direct evidence, conducting a customer survey can help establish confusion. However, be aware that these surveys can be costly and, if inconclusive, may weaken your position rather than support it.

What happens if the courts agree that there is trademark infringement?

If a court determines that trademark infringement has occurred, it can issue an injunction to prevent the infringing party from using the trademark in the future. In addition to halting the unauthorized use, the court may award you monetary damages for any financial harm caused by the infringement. In some cases, the court may also order the infringer to pay your attorney's fees, particularly if the infringement was willful or egregious.

How do I avoid trademark infringement?

To avoid inadvertently infringing on another party’s trademark, it is critical to conduct thorough research before launching a product or brand. Start by searching the USPTO’s TESS database to identify any existing trademarks that are similar in name, appearance, or industry. Also consider checking state-level trademark databases, domain name registrations, and conducting a general internet search. Taking these steps early on can help you avoid costly legal disputes. For additional guidance, you can refer to our article, How to Avoid Trademark Infringement.

Frequently Asked Questions

1. What tools can help me detect trademark violations? Google Alerts, USPTO TESS, reverse image search, and trademark monitoring services like CompuMark or Corsearch are all helpful.

2. How often should I monitor for trademark violations? At minimum, review your trademark presence quarterly, but active businesses should monitor monthly or continuously with automated tools.

3. Can I report a trademark violation to Google? Yes, Google has a legal complaint process for reporting trademark infringement, especially in paid advertising and search results.

4. Is common law trademark protection enough to act on infringement? Yes, but registered trademarks provide stronger legal backing and broader geographic protection, making enforcement easier.

5. What if someone uses my trademark in a different industry? It depends on whether the goods or services are related and could cause consumer confusion. Consult an attorney for case-specific guidance.

If you need help understanding ornamental design laws, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb,