Trademark Infringement and Likelihood of Confusion

Trademark Infringement and Likelihood of Confusion


As a trademark attorney, I see things every day, many of which don’t surprise me anymore.  But I have to say one thing that I really hear a lot in the area of trademark registration and trademark infringement is, “Hey, my mark is different than the one that is being used by the trademark holder” or “my mark isn’t exactly the same” or “my logo is slightly different.”  What people fail to realize is that trademarks protect around the mark.  They protect more than just the literal use of the word or the design element or the logo or the colors in the related elements of the trademark use.

So if you have trademark rights in a word, logo, symbol, design, slogan, you get to protect more than just the literal use of that trademark.  You get to have the exclusive right to use that mark in commerce as related to your goods and services or any other goods and services that might be similar to yours, and you get to preclude anyone from using something that is similar to the point that there is a likelihood of confusion from the consumer point of view.

So what in the trademark world does this concept of likelihood of confusion mean?  Well, there are any number of different factors that a court would look at in order to determine whether or not someone is infringing a trademark, whether or not there is a likelihood of confusion between the plaintiff’s trademark and the defendant’s use.  The thing that you need to understand is that if you’re in a similar market selling something that is similar, if you’re using a word or design that looks or appears to be similar, consumers might think that the defendant’s trademark or the defendant’s use is in fact sponsored or owned by or endorsed by the plaintiff trademark holder.

So the test of likelihood of confusion is a very broad one, and every case is fact specific.  If you receive a trademark infringement threat letter, someone is alleging that you are infringing their mark in commerce.  Do not rely on the slight differences between what you’re doing and what the complaining party is doing with their mark.  That’s not going to get you anywhere.  You have to put yourself in a consumer’s point of view and say, “If I saw the two marks side by side and I saw what each company was doing, would I potentially be confused about who was who? Would I be confused about the source and origin of the goods and services that I was buying?”  Not only do we protect the Nike Swoosh, in the area of sporting goods and apparel and shoes, but we protect against any use that is similar to the Nike Swoosh, because we don’t want consumers to be confused about who they’re dealing with.

A good trademark infringement attorney is going to tell you, if you receive a cease and desist threat letter for trademark infringement, that you’ve got a big problem if your use is similar.  Here is the problem from the defendant’s point of view.  You might get shut down.   You’ve got an investment in the use of a domain name perhaps.  Perhaps your using the trademark in your marketing materials.  If you’ve received a trademark infringement threat letter claiming substantial similarity, are you going to continue to invest your time and money in that use, knowing that at some point down the line you could be shut down, and even more so you could be liable in a trademark infringement lawsuit for up to $150,000 and statutory damages plus attorney fees?  How much time and effort are you going to want to continue to put into that mark?

One thing that trademark lawyers at trademark law firms will do for clients who are in the defensive position who have been accused of trademark infringement is try and negotiate an exit strategy for the defendant when there is a problem.  So if you think that you may be in a difficult situation, either because you can’t afford to fight the fight, or because you now realize that just because your trademark is slightly different that it’s not going to potentially help you in a court of law, or if you didn’t realize that trademark law protects around the trademarks broader than the literal use of the mark but now you do, you need to negotiate an exit.  You might get a joint use agreement with the plaintiff.  You might be able to buy yourself some time to transition out of your current inventory and transition into a new mark.

Here are the lessons for today from this trademark attorney.  Make sure before you brand your goods, your services, your company, you have a competent trademark law firm do a trademark availability search.  You do not want to invest in a brand that you later have to change.  It could put you out of business.  If you’ve already chosen a brand and you receive a trademark infringement threat letter, then you need to get a good trademark law firm involved in order to be able to understand what your risk is, what your rights are, what options you have, and what the recommendation of the attorneys are in terms of moving forward.

My name is trademark attorney Enrico Schaefer, and we’ll see you next time.

  1. Punctuation marks only affect the appearance of a verbal mark. Punctuation marks do not usually prevent confusing similarity when either sound or meaning is close. Similarity in any one of appearance, sound, or meaning could satisfy a likelihood of confusion if strong enough.

    Harvey Hubbell, Inc. v. Red Robe Industries, Inc., 191 U.S.P.Q. (BNA) 119, 1976 WL 20887 (T.T.A.B. 1976)
    Data.Lok with a period in the middle, is confusingly similar to Datalok. “[T]he marks “DATALOK” and “DATA . LOK”, although used by the parties in different graphic presentations, create the same general commercial impression and are, for all purposes herein, legally identical.”

    In re Sears, Roebuck and Co., 2 U.S.P.Q.2d (BNA) 1312, 1987 WL 123813 (T.T.A.B. 1987)
    Cross-Over, hyphenated, is legally identical to Crossover unhyphenated.

    In re Boyd Coddington’s Hot Rods & Collectibles, Inc., 2008 WL 4155518 (T.T.A.B. Aug. 28, 2008)
    That the applicant’s mark has an apostrophe “s” (Boyd’s), unlike the registered mark (Boyds), is inconsequential in distinguishing marks. The visual similarity "weighs heavily" in favor of a likelihood of confusion.

  2. Pocono Rubber Cloth Co. v. J.A. Livingston, Inc., 79 F.2d 446, 448 (3d Cir. 1935)
    “It is absolutely impossible for the defendant to control the pronunciation which the trade would give to the word.”

    Pronunciations depend on the consumers, not language experts or mark owners as shown by Zabars & Co., Inc. v. Zabas Grill, LLC, 2008 WL 2817087 (T.T.A.B. 2008). The defendant argued that two marks were different based on etymology–Zabar (owner’s name) and Zaba (place in Mexico). However, the Board was not persuaded by the arguments because the pronunciations would not be apparent to the general public.

    In re Logiciels Winradio Software, Inc., 2009 WL 129545 (T.T.A.B. Jan. 8, 2009)
    The Board affirmed examiner’s rejection of Winmedia based on likelihood of confusion with Windows Media. Applicant argued that its mark would be viewed as a short form of “winning media,” but Board recognized computer-dictionary's definition of “win” as short-form for “windows”, making meaning of applicant's mark “windows media.”

    Interstate Brands Corp. v. Mckee Foods Corp., 53 U.S.P.Q.2d (BNA) 1910, 1913, 2000 WL 187204 (T.T.A.B. 2000)
    The Board takes into account whether oral requests could confuse consumers. Even though the products are selected by consumers from a shelf or rack, confusion can arise from similarity of sound if the choice is based on another's oral request or recommendation. The Board noted that the products, snack cakes, were marketed to children, and that it was “highly probable” that a child could ask a parent to buy the product and the parent could then confuse the marks HoHos and Yo-Yo's.

    But see La Maur, Inc. v. Revlon, Inc., 245 F. Supp. 839 (D. Minn. 1965)
    Any similarity in pronunciation is minimized when product is often purchased in self-service (cosmetic) department and not by request to a sales clerk.

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