1. Trademark Protection
2. Factors Considered by the Court
3. Relatedness
4. Characteristics of the Mark
5. Distinctiveness
6. Intent

Trademark theft is the use of a name, slogan, word, phrase, or symbol that is used in commerce by another business. This is known as infringement and is defined by the court based on the likelihood of confusion by consumers due to unauthorized use of the mark.

Trademark Protection

Intellectual property (IP) includes trademarks as well as patents, copyrights, and trade secrets. Infringing on the trademark of another business constitutes fraud because this type of misrepresentation is legally prohibited.

If you sue another business for trademark infringement, most often the court will order the defendant to stop using the mark if your claim is successful. If you have federally registered your mark, you can request that the defendant pay your attorney fees. Although the Lanham Act allows financial damages to be collected in trademark lawsuits, they are rarely actually awarded.

Defending your trademark in court can be expensive because you have the burden to prove that the mark caused market confusion that led to a loss of revenue. This may require research and expert witnesses.

Factors Considered by the Court

  • The court requires direct evidence of similarities that could create confusion in their actual context in the marketplace. Evidence of past confusion requires this factor to be more heavily weighted.
  • If either party plans to expand the business to compete with the other, use is more likely to be considered infringement. Expanding product lines or geographic area are both considered here.
  • If there is no plan to expand in either of these areas, this does not mean confusion will not exist.
  • The court uses the standard of a regular buyer, though buyers with specialized expertise in a specific area will be held to a higher standard. This is often true with products that are unusual, expensive, and/or highly technical. The standard of care is determined with consideration to the other factors as well.
  • The marks will be considered in their context, including how and where the products are sold and in what circumstances they would be purchased. Evidence reviewed includes advertisements, store location, and the type of businesses in question.

Relatedness

The concept of relatedness in this context does not mean that the products are necessarily in the same industry, but it does mean that the typical consumer could associate them with one another. Most cases fall into one of these three groups:

  • Similar marks indicate likely confusion when products are direct competitors.
  • Products that do not compete but are related require other factors to determine whether confusion may occur.
  • Confusion is unlikely when the products are not at all related. For example, one review of businesses in Minneapolis with the word Speedy in the name found services ranging from locksmiths to car washes, meaning this is unlikely to be protectable as a trademark.

Characteristics of the Mark

When considering conflicting marks, the court will look at the words themselves and their meaning as well as how they look and how they are pronounced. It will be viewed holistically and not divided into original features. It is also compared to see if it would be confusing to customers when viewed alone.

Distinctiveness

The court names the trademark that was used or registered first as the "senior trademark." The more unique this mark, the higher the level of protection available. Distinctiveness considers these factors:

  • Generic symbols or words, those that describe the product rather than its distinguishing features, are not distinctive.
  • Descriptive symbols or words are considered distinctive only if customers recognize the mark associated with the product.
  • Suggestive trademarks are considered distinctive because they require imagination to connect the words with the product.
  • Arbitrary trademarks are those that are not associated with the products they describe by a logical relationship (Apple computers, for example).
  • Fanciful trademarks are among the most distinctive. These words have no other meaning outside the use associated with the product (Xerox, for example).

Intent

If the mark was chosen by the defendant to specifically cause confusion, this alone may constitute infringement. Purposeful infringement is done to derive benefit from the trademark owner. Knowledge of the senior mark can serve as proof of intent to infringe.

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