Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.
Welcome to Trademark Law Radio, my name is Trademark Infringement Attorney Enrico Schaefer. I work for a law firm that specializes in all trademark matters, trademark law, trademark registration, and, of course, trademark licensing and trademark infringement.
Today, we are going to be talking about trademark infringement. It is obviously a hot topic because the internet makes trademark infringement very easy. It’s as easy as creating a website or domain name and then allowing someone to infringe on it by registering a similar domain name or using your trademark in their web page. And let’s face it, in today’s world, trademark infringement is rampant and you need to protect your trademark, especially if it’s registered, if, in fact, you are going to build value around that trademark.
So, the first thing that we’re going to talk about is really, what is trademark infringement. So, let’s talk about the “what,” and then we can talk about what to do in terms of protecting your trademark.
Trademark infringement is the violation by a third party of the exclusive rights of the trademark owner, who has the exclusive use rights with regards to that trademark in commerce. So, it is violating the exclusive rights of the person or company that owns the trademark and it implies that there is no authorization by the third party to use the mark. That is to say, no permission has been granted. And infringement actually occurs when someone uses a mark that is identical. Those are the easy ones, right? If I tried to launch a company called Microsoft selling software, I’d be in deep trouble. The more challenging aspect is that infringement occurs when someone uses a mark that is confusingly similar to your mark, okay? And so, someone uses something that’s close but not quite the same, then, in fact, there may be a trademark use without authorization of the trademark owner.
Now, we need to talk a little bit about what is confusingly similar. This obviously is the most challenging aspect of trademark, and it is trying to determine what, in fact, is trademark infringement when two people are using a similar mark but not quite the same or using a mark in different markets (one person selling wine, the other person is selling beer). This concept of trademark infringement is typically something that does require a trademark attorney who specializes in trademark law because of this challenging concept: what is a confusingly similar trademark? It’s not going to be trademark infringement unless, in fact, someone’s using something that’s confusingly similar.
Okay, so, let’s talk a little bit about goods and services. If you are selling a particular good, let’s say, t-shirts or a particular service, let’s say, consulting service, then you’re going to compare your mark to the third party’s use of a similar trademark and you’re going to compare what goods are you selling versus what goods are the other person selling. What service are you providing compared to what service the other person is providing. If you are selling something that is in the same market, for example, if you’re both selling running shoes, if you’re both selling widgets, if you’re both selling machines that do a specific item, then there’s going to be a much higher likelihood of confusingly similar marks. If you are providing a service and you have a registered trademark for your service or a service mark and you’re both offering accounting services, then there is going to be higher likelihood of confusingly similar use of the marks, a confusing similarity.
So, let’s talk a little bit more about this notion of confusing similarity. The first thing you need to know is that in many countries you do have to have a registered trademark in order to assert trademark rights. In the United States, you do not have to have a registered trademark in order to assert trademark rights. You can have what are called “common law” rights. So, it’s always good to register your marks in every country in which you’re doing business, but it’s certainly especially important to outside the United States. So, again, let’s take a look at what are the factors that are going to go into confusing similarity. Let’s talk a little bit about some important ones.
When you’re trying to determine whether or not a third party’s use is confusingly similar to your trademark, you’re going to look at, number one, the strength of your mark. And what do I mean by that, “The strength of your mark”? Well, Microsoft has got a very strong mark because everyone in the world knows who Microsoft is. It’s a very unique word (Microsoft). It’s a very arbitrary word to attach to a trademark, which means if you hear the word Microsoft, you’re automatically going to think of a single company, that being Microsoft Corporation. So, there are a lot factors that go into strength, but in general, for today, you’re mark is strong if it is unique and it is well-known. So, a strong mark is going to have broader protection.
The second factor we’re going to talk about is the proximity of the goods or services. And that’s something that we already touched on. If you are offering a particular good and the person you believe is infringing is in the same or similar market, then there is a greater likelihood of confusion. Let me give you an example. There’s Delta Faucets and there’s Delta Airlines. They both co-exist as trademarks and no one thinks that one company is the other company or that Delta Faucets has anything to do with the ads they see running for airline services. So, you can have the exact same trademark in different markets and that can be okay because there is a low likelihood of consumer confusion. And keep in mind, we’re really talking about from a consumer perspective here. Is a consumer going to be confused about the source and origin of the goods. When I buy a product that has got the word Nike attached to it, I have the right as a consumer to believe and to know that that product, that shoe, was actually manufactured by Nike and not some other company. So, we’re trying to protect consumers here.
Let’s talk about another factor that goes into whether or not a trademark use is confusingly similar. And that’s the similarity of the marks. That is going to be an interesting issue it depends on how long and how unique the word is. So, if I have a company called Apple Computers and I’ve got a registered trademark for that, that’s great. Well, what if I’m a company that’s going to launch as Apel computers, what do you think? Are those confusingly similar words? The answer is, yes, because the trademark office protects around the trademark. So, think of it this way. It’s much broader than the literal word. Trademarks protect around the word. And the greater trademark rights you have, the broader the circle is around the word. Apple, Microsoft, some of these companies have extremely broad trademark protection. But trademark are, in many instances, phonetic, so the trademark office would see Apple and Apel as virtually identical, if not, identical uses of the word. So, you’re not focused on the spelling, you’re focused on the phonetics, and you’re focused on whether or not a consumer in seeing the word or hearing the word would be confused, that’s always the test.
Okay, let’s talk about a forth factor here. The forth factor is has there been actual confusion? If consumers are actually confused and they’ve contacted you saying, “hey, where is my widget that I ordered?” And you say, “Well, what’s your name…what’s your address…” and you realize this person has never placed an order with you and then you, upon further questioning, realize that this consumer was really dealing with another company with a similar name, then that, in fact, is actual confusion. And that is always the best evidence of infringement that there is because consumers weren’t likely confused, they, in fact, were confused.
Let’s talk a little bit about marketing channels. There’s a lot of factors here because there’s a lot of different ways that trademarks can differentiate themselves in the market. If you are selling fish sticks and you’re distributing them only over the internet, then it’s less likely that someone with a similar trademark who sells fish sticks in the grocery store is going to result in confusion or actual confusion or a likelihood of confusion. If you sell fish sticks and the other person sells wholesale fish, they’re less likely to be confusion, even though you’re both selling fish. So, these are always fact-specific questions, but you want to know how are you selling your goods or services versus how is the alleged infringer selling their goods and services.
The next thing is the type of goods, what is the degree of care that a consumer is likely to exercise in the market? So, some goods, on very casual inspection, are assumed to be sold by the particular brand owner. We spend a lot of time researching and buying certain goods such as, for instance, you might spend a lot of time trying to figure out what’s the right car to purchase. You are going to spend a lot less time picking ketchup off of the shelf. So, you need to look at what is the consumer experience with regards to this market. How much time and care do they actually spend in looking at the brand to determine whether or not they are actually getting what they think they are getting?
Another factor is “intent.” Sometimes, the person who is using a similar mark is, in fact, intending to siphon off your customers. And so, If they are intentionally infringing on your trademark, then that is going to be a very big factor in your favor in proving trademark infringement.
The last factor, which is really not the last factor, because they could look at lots of other things, but the last thing that courts will almost always look at is whether or not there’s going to be a product line expansion. Oftentimes, the trademark in question – the infringing use of the trademark – is something that’s not quite in your market. But if you are likely to expand into that market or a similar market in the future, then it makes it more likely that the court is going to grant you exclusive rights and find trademark infringement.
So, these are the types of things that you want to look at if you have been the victim of trademark infringement and you’re trying to determine what to do and whether you have a trademark infringement claim. Or, if you’ve been falsely accused of trademark infringement or accused of trademark infringement in a way that gives you pause. these are the types of factors you want to be thinking about in determining whether or not you are, in fact, infringing on someone else’s trademark. These are the things that a court under trademark law is going to look at in order to determine whether or not there is trademark infringement.
You have been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.