1. What is a Trademark Infringement Test?
2. Testing for "Use in Commerce"
3. Testing for "Likelihood of Confusion"
4. Why is a Trademark Infringement Test Important?
5. Frequently Asked Questions

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.

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.

Frequently Asked Questions

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

Having proof of actual confusion from customers is not necessary to prove trademark infringement. If you don't have proof, you could create a survey for your current customers and see if they have ever confused your company with the other. These can be expensive and if the results do not show customer confusion it could have a negative effect on your case.

  • What happens if the courts agree that there is Trademark Infringement?

If the courts rules in your favor, they will likely stop the company from using the trademark in the future. You could also be paid for the damage it has done to your business. In some cases you will also be able to get your lawyer's fees back.

  • How do I avoid Trademark Infringement?

It is incredibly important to do your research before you begin marketing or advertising your products. You can search the trademark database on the USPTO website. For more information you can also have a read through our article, How to Avoid Trademark Infringement.