Business owners should understand what constitutes trademark infringement before they encounter it, regardless if they are the enforcer or alleged infringer. You should also understand common defenses from both sides as well. In this post we will cover the basic elements of an infringement claim and common defenses that might hold up.
Trademark Infringement – Likelihood of Confusion
The most common infringement claim is likelihood of confusion. An infringer commits trademark infringement if they use another party’s trademark to sell goods or provide a service if their use is likely to cause consumer confusion as to the source of the goods or services.
Let’s revisit Evan’s Coffee House, an example we discussed earlier this week. Assuming Evan holds a federal registration for “Evan’s” in connection to the sale of coffee, he will be able to use that registration to prevent others from opening an “Evan’s Coffee House;” but that’s not all.
Evan can likely prevent someone from using “Evan’s” in connection to an eat-in-bakery if the services provided are similar and he may even be able to prevent someone from selling “Evan’s” coffee grounds in a grocery store. Additionally, Evan can prevent alternate spellings such as Even’s, Evan, Even, Evens, and maybe even Heavens coffee from being used to sell coffee if he can show that consumers are likely to be confused as to the source of the goods.
Notice that actual confusion is not required. All that is required is a likelihood of confusion to prove trademark infringement.
So, what happens when Evan sends a cease and desist letter to Evens Coffee House? Several things can happen, most likely of which is the alleged infringer will claim there is no likelihood of confusion or he might raise some other defense.
Alleged infringers will often raise the issue of confusion and claim there is no confusion or likely confusion. When that happens the parties will usually negotiate their various positions and hopefully avoid litigation. Of course, some alleged infringers have affirmative defenses they can raise, specifically descriptive use and nominative use. When these affirmative defenses exist, an alleged infringer might be allowed to use the mark, even without permission.
Descriptive fair use occurs when the alleged infringer uses a trademark in a way that is solely for descriptive purposes and is unlikely to cause consumer confusion. In the case of Evan’s Coffee Shop, another Evan could open up a coffee shop and include in it’s marketing materials the fact that Even Doe is the owner and manager of the shop, provided the materials don’t create the impression that the new shop is related to Evan’s Coffee Shop.
Nominative fair use occurs when the alleged infringer uses a mark and there is no other way to refer to the good or service. For example, a car repair shop may say they repair BMWs, provided they don’t use the mark in a way to indicate they are an official BMW repair shop. This is because there is no other efficient way to alert consumers that they repair BMWs.
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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.