Trademark Infringement and the Likelihood of Confusion Test
A claim for infringement of a trademark may be based upon a violation of Common Law rights, State trademark registration, or Federal trademark registration, and all three claims may co-exist at the same time.
Trademark registration only reinforces your rights. Contrary to popular belief‚ due to common law rights you need not own a trademark registration for trademark infringement to exist. The key inquiry in a matter of trademark infringement is whether an ordinary consumer is likely to get confuse between the trademarks. If the trademarks are confusingly similar‚ the prior user should request that the subsequent user cease use of the trademark. This commonly occurs in the form of a Cease and Desist Notice. If the subsequent user refuses‚ trademark litigation may ensue.
The standard for trademark infringement is “likelihood of confusion.” No trademark shall be refuse unless it causes confusion, mistake or deceit with a previous existing mark. A mark is infringing if it is confusingly similar to an existing mark. It is about public perception – will the public be confused? Specifically, the use of a mark in connection with the sale of a good is infringing if it is likely of causing confusion in the consuming public as to the source of those goods or as to sponsorship or approval of the particular goods.
The Courts weigh factors to measure the likelihood of confusion:
- Strength of the mark;
- Proximity of the goods;
- Similarity of the marks;
- Evidence of actual confusion;
- Marketing channels used;
- Type of goods and the degree of care likely to be exercised by the purchaser (also known as “purchaser sophistication”);
- Defendant’s intent in selecting the mark;
- Likelihood of expansion of the product lines;
- Quality of Defendant’s goods or services; and
- Whether the Defendant’s attempt to register the mark was bona fide and in good faith.
Simply put, there are no hard and fast rules in determining whether a likelihood of confusion exists. To summarize, the Courts will look at:
- The similarity of the trademarks;
- The similarity of the goods or services;
- The similarity of trade channels;
- The number and nature of similar trademarks in use on similar goods; and
- The extent of any actual confusion
The most important factors are often the first two. Marks are considered very similar if they are close enough in sound, appearance, or meaning. However, using the same mark on a completely unrelated product will not give rise to infringement because consumers are not likely to believe that the goods are being produced by the same business. However, famous marks such as Coca-Cola and Coach are registered in a broad range of classes, making them virtually impossible to use in a different channel of distribution.
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