Trademark Infringement. I bet you hear about it all of the time. But what is it? How does one establish it? What the heck does likelihood of confusion even mean? These are all great questions, and you are in luck, because I’m going to answer them!
First of all, let’s discuss what a plaintiff must establish to show trademark infringement. After all, you can’t do anything if you don’t meet the requirements.
To prevail on a claim for trademark infringement, a plaintiff must establish: (1) that its mark is valid and entitled to protection; and (2) that the defendant’s unauthorized use of the mark in commerce is likely to cause confusion as to the source of defendant’s goods, or deception as to affiliation, connection, or sponsorship of the defendant’s goods.
First Element: Establishing That the Trademark is Entitled to Protection
Here’s something I bet you didn’t know- a plaintiff can assert a claim for trademark infringement for registered AND unregistered trademarks. The unregistered mark just has to qualify for registration under the Lanham Act. However, this does mean that the validity of the trademark is a threshold issue in proving infringement and the plaintiff bears the burden of proof.
A plaintiff can establish validity by demonstrating priority of use (that the plaintiff was the first to use the mark in commerce). You should know that a registered trademark provides a plaintiff with a presumption that the mark is valid (hence why us lawyers are all like- register your trademark!!!!). Registering a trademark also entitles the trademark holder to the presumption that the mark was first used in commerce as of the date the trademark application was filed.
Unregistered trademarks can be shown to be valid, but the bar is much higher. That’s because it requires a showing that the mark is inherently distinctive or has acquired distinctiveness through secondary meaning. A mark is inherently distinctive if it is so fanciful, arbitrary, or suggestive that it can serve to identify a particular source without a need for consumers to be educated that the name functions as a trademark.
Acquired distinctiveness, on the other hand, requires courts to consider the following factors: (1) advertising expenditures; (2) consumer studies linking the mark to a source; (3) unsolicited media coverage of the product; (4) sales success; (5) attempts to plagiarize the mark; and (6) the length and exclusivity of the mark’s use.
Second Element: Establishing the Likelihood of Confusion
Confusion exists if it is likely that “ordinary prudent purchasers” will be misled or confused as to the source of the goods or services in question, or where consumers are likely to believe that the plaintiff sponsored, endorsed, or other approved of the defendant’s use of the mark. A claim of trademark infringement cannot be sustained unless this element exists.
To decide if there is a likelihood of confusion, courts will consider some or all of the following:
- the strength of the contested mark;
- the degree of similarity between the marks;
- the proximity of the goods;
- the likelihood that the plaintiff will enter the same market as the defendant (that is, “bridge the gap”);
- the marketing channels used;
- evidence of actual confusion;
- the defendant’s intent in adopting the contested mark;
- the quality of the defendant’s product; and
- consumer sophistication in purchasing the particular goods or services.
There are also different types of confusion, and often a court will look at the type before it considers the above factors. The types of confusion are:
- source confusion
- endorsement confusion
- initial interest confuction
- point-of-sale confusion
- post-sale confusion
- forward confusion
- reverse confusion
I will wait for another post to go into these in more detail, as well as the likelihood of confusion factors, because, let’s be honest, this is a lot of information!
Hopefully this has provided you with some more understanding about trademark infringement. If you’d like to protect your trademark, please schedule a consult with me, Nicole Schaefer. I’m more than happy to answer your questions.