Trademark infringement occurs when one party uses another party’s trademark in commerce in such a way that consumers are likely to be confused as to the first party’s goods or services. Whether consumers are likely to be confused is a question of fact that must be decided during a trial (or by the parties in settlement negotiations, when possible).
The nine factors below are helpful in making this decision and are used by courts and lawyers in most trademark litigation lawsuits. As a result, they are good factors for you to think about if you find yourself being accused of infringement or if you think someone is infringing on your mark.
1. Strength of the Plaintiff’s Mark
Assuming the plaintiff has a valid trademark, they will look to the strength of the mark to decide how much protection it deserves. As you can learn in this post, arbitrary/fanciful marks receive the most protection, suggestive marks the second most, and descriptive marks the least. (And generic marks never receive protection.)
2. Similarity of the Marks
Courts will look at three items when comparing the two marks. First is sight, do the marks look alike when written next to each other. Second, do the marks sound the same when spoken. And third, do they have the same or similar meanings when looked up in a dictionary. The more similar the marks are from those viewpoints, the more likely trademark infringement is to be found.
3. Similarity of the Goods or Services
Related to the last point, the court will review how similar the goods or services are to one another. If one mark is used to sell enterprise computer software and the other used to sell iPhone games, those might be considered similar enough as to cause confusion. On the other hand, if the other were used to sell grass seed, then they would probably be sufficiently different to avoid a finding of trademark infringement.
4. The Likelihood the Plaintiff will Expand into the Defendant’s Market
For common law trademarks (which only receive protection in their geographical areas and natural zones of expansion) courts will look to whether the plaintiff is likely to enter the defendant’s market. For example, a food truck operator in Miami might be able to prevent a similarly named food truck from operating in Orlando, but probably not in Portland (which is why the Miami operator should get a federal registration – for nationwide rights).
5. Actual Confusion
A court can find trademark infringement even if actual consumer confusion is not present – all that is needed is likely confusion. Of course, if you have evidence of actual confusion such as your customers going to a competitor’s location due to their infringement that goes a long way towards proving an infringement case.
6. Sophistication of Buyers
Courts will also consider how much effort a consumer is likely to put into the purchasing decision. The more effort (such as buying a plane) the less likely they are to be confused because they should learn of the different source during their research. The less likely (such as buying clothes), the more likely they are to be confused as to the source because they likely will not do a ton of research into the source.
7. The Defendant’s Intent
While not a technical requirement, courts often look at this consideration because if bad faith can be shown, it is clear evidence of infringement.
8. Quality of Defendant’s Goods
When determining damages, a court is likely to look to whether the defendant’s goods were shotty. If so, that could harm the goodwill of the plaintiff and entitle the plaintiff to greater damages.
9. Consent Agreements
If the plaintiffs have an agreement under which the defendant was granted permission to use the mark, then that will obviously lessen the likelihood that confusion exists and therefore negate an infringement claim.
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*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.