Archives For Trademark Law

The Nine Factors a Court Considers When Deciding “Likelihood of Confusion”

August 18, 2015 — 1 Comment

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.

Stay Current

We hope our blog is helpful to you in terms of teaching you what you need to know about trademark law. To stay up to date, be sure to connect with us on Twitter & Facebook!

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Image: Thinkstock/adolf34
*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.

 

In Trademark Disputes, Trademark Law , ,
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Domain Law 101: The Anticybersquatting Consumer Protection Act

August 4, 2015 — Leave a comment

Startups and businesses of all sizes often struggle to obtain the right domain name for their companies. Many third parties own domain names you may want to use and they often have a legal right to do so. However, when they don’t have such a legal right, and when you have a valid trademark claim to the domain, the Anticybersquatting Consumer Protection Act (ACPA) may allow you to force them to transfer the domain to you.

Let’s take a look at the law and what it means to you and your business.

What is Cybersquatting

The ACPA can be used to resolve a lot of different types of abuses. For example, if someone registers a domain using your trademark and offers to sell the domain to you for a large sum of money, that may be a violation of the ACPA. It can also be used to prohibit someone from improperly profiting from the commercial use of your trademark. Further, you can use the ACPA to prevent someone from tarnishing your mark, for example using your trademark in a phonographic website name.

How to Win a ACPA Claim

To win such an argument, you must show certain things, some of which can be hard. Below is a summary of things to consider when deciding if you have a good claim.

1. Valid trademark rights

You must show that you have valid trademark rights. But not just any trademark rights – rather, you must have a trademark that is distinctive or famous. This can sometimes be hard to prove.

2. Where and how your mark is used

To win a ACPA claim you will have to show that the other party registered or trafficked in or otherwise used a domain name that improperly uses your trademark.

Further, you often cannot win a ACPA claim if your mark is used after the top level domain. For example, if someone used “MightyMarks” in a path (like domain.com/mightymarks) it would be hard for us to win a claim. But if they used it in the second level domain (like WeAreMightyMarks.com) we would have a good chance of winning our claim.

3. Time of registration

To prevail under an ACPA claim, you must also be able to show that the registration of the domain in question was made after your trademark became distinctive or famous. This obviously makes it hard for new companies to win under a ACPA claim.

4. Typo domains are also covered

Often times you will find misspelling and typo domains that create problems. For example, if someone created MightyMarksBl0g.com (note the zero in place of the “o”), that would be considered a typo domain. In such a circumstance, even though the domain is not identical to our domain, a court would still likely find in our favor because it would still be confusingly similar to our domain.

5. Bad faith

You must also prove that the other party acted in mad faith. This is probably the hardest element of winning an ACPA claim. Specifically, you must show that the other party acted with “a bad faith intent to profit from” your trademark.

As a result, if another party is using your trademark in a different geographic region, or for a different type of goods or services, even if the use is only minimal, you may have an uphill battle in front of you. Another example is when someone registers their name or nickname. In those situations, even if they are similar to your trademark, they may have a legitimate use and therefore it may be hard to win a claim against that person.

On the other hand, if someone registers a domain incorporating your trademark and immediately tries to sell you the domain for a high price, that is usually pretty good evidence of a bad faith intent. In these situations, you can often win a claim against that person.

What should you do?

If you find yourself with a possible ACPA claim, you should definitely speak to an attorney about your case. he or she can advise you of your rights and talk about what damages and equitable remedies are available to you (we will cover those in a future post).

Find this helpful?

If you enjoyed this post, you should subscribe to our quarterly newsletter, Mighty Updates, to stay on top of trademark news and legal issues.

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Image: Thinkstock/TheaDesign
*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.

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Trademark Roundup: Trademark Basics by Mighty Marks

March 31, 2015 — 1 Comment

We’ve been writing about trademark law for a full year now and we’ve covered a lot. To help you better understand the ins and outs of trademark law we want to roundup some of our most practical posts to help you find the information you need to know about how trademarks impact you and your business.

In this post, we’ll cover trademark basics.

Trademark 101

In our post What Everybody Ought to Know About Trademark Law we covered the three things you need to understand first.

First, the purpose of trademark law is to protect consumers. That is, trademarks serve as source identifiers for goods and services and help consumers find the specific goods or services they are seeking.

Second, that trademark rights stem from use in commerce. Technically, a registration is not even required, but a registration does have a number of significant benefits.

And third, a trademark protects names, slogans, and the like. Copyrights and Patents are different. Copyrights usually protect creative works, while Patents usually protect inventions.

Protecting your mark

In our post 5 Keys to Protect Your Trademark we discussed topics you need to learn to fully understand how you can protect your mark. Specifically: (a) that registration is not required, (b) common law protection only extends to the area in which you are using your mark and to your natural zone of expansion, (c) that rights are limited to the goods and services you sell, (d) that you cannot protect a descriptive mark, and (e) registration is strongly encouraged for maximum protection.

Trademark Applications

Speaking of registrations, we’ve covered a lot about how to obtain a registration.

To begin, we’ve covered Why Your Startup Should Apply for a Federal Trademark, and What To Do First: Company Name or Trademark. The benefits to registration include nationwide notice of your claim and ownership of your mark, and also a stronger ability to force infringers to cease their infringement. In the second post mentioned just above we provided guidance on how to reserve your business name with both your state and the USPTO.

What’s the USPTO? Glad you asked. We wrote all about the United States Patent and Trademark Office in this post: What is the USPTO and How Does it Affect My Business?

Trademark Infringement

And lastly, we’ve covered trademark infringement many times on this blog. The starting point to understanding infringement is this post, Justice Explained: Trademark Infringement & Defenses. In that post, we discussed how infringement is judged based on likelihood of consumer confusion. If consumers are confused, then infringement is likely to have occurred.

As we move into our second year of blogging about trademark law and trademark applications, we hope you continue to find our blog useful for your business.

If you have any topics you’d like covered, feel free to contact us to tell us what you’d like us to talk about!

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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.

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The Benefits of Using an Attorney to Conduct a Trademark Search

February 3, 2015 — 5 Comments

Conducting a good trademark search prior to filing an application is a critical first step that many businesspersons overlook. In a previous post (How to Perform a Trademark Search) we walked readers through various sources they may want to search including common law sources, business name databases, and the USPTO records.

While you can do it on your own, there are a number of advantages to seeking the help of a trademark attorney. In this post we will explore some of those benefits.

Common Law Searches Reveal A Lot of Marks

While the USPTO maintains a very large database of registered trademarks, those are not the only ones you should research. This is because trademark rights stem from first use in commerce, not registration. As a result, you should always conduct a common law trademark search to see what marks are being used in commerce already.

A trademark attorney will know where and how to conduct this kind of a search. You should be looking online, in newspapers, magazines, and other sources. Additionally, a trademark lawyer is uniquely qualified to examine each potential mark to see who uses it, where they use it, when they first started using it, and whether their use is in connection to any similar goods or services you seek to provide. They can then weigh in on whether you have good rights or not.

Business Name Records Can Be Misleading

A trademark attorney can also search state business name records. Sometimes a registration for a business name or fictitious name can cause conflict and may prevent you from having strong rights. However, an experienced trademark attorney can look at additional details regarding these files to see if the name is still in use, if it has been terminated, as well as whether the use constitutes use in interstate commerce.

USPTO Records Are Complex

Lastly, a trademark lawyer can perform an exhaustive search of the USPTO database. Most basic searches will reveal many results and an attorney can help to narrow your search to look for marks that might be confusingly similar and in the same international class as your mark. Her or she can also use judgment in deciding what other searches must be ran, such as design code searches and searches for similar or misspelled words.

Then What?

After conducting these thorough searches your trademark attorney can advise you on the odds of obtaining a registration. While it is often difficult to put odds in writing, a trademark lawyer can offer good guidance on when you should not file an application due to a likely denial.

That can save you a ton of money!

If you want help searching for existing marks or filing a trademark application with the USPTO, be sure to check out MightyMarks.com. Our online platform, coupled with years of trademark experience, make us uniquely qualified to help businesses protect their trademarks.

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Image: Thinkstock/Woodkern
*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.

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Sealtight vs. Sealtite: A Trademark Battle in the Supreme Court

December 9, 2014 — Leave a comment

As you may recall from other posts on this blog, trademark laws grant a trademark owner the exclusive right to use their registered mark in commerce with respect to specific goods or services. Those rights extend not only to other people or companies using their exact registered mark, but also to uses of marks that are “confusingly similar” to the registered mark. The USPTO uses this rule to deny marks that, although spelled differently, are pronounced the same.

However, due to rulings in the Federal Courts (which are separate from the USPTO), the Supreme Court has decided to weigh in on this issue via the Sealtight Case.

Background

B&B Hardware sells self-sealing, leak-proof screws and bolts for use in high-tech industries such as the aerospace and medical industries, under the name Sealtight. B&B obtained a registration for this mark in 1993.

Hargis Industries, on the other hand, sells construction screws for buildings under the name Sealtite Building Fasteners.

When Hargis applied for a federal trademark for Sealtite in the late 90’s, B&B objected arguing the use of Sealtite would cause consumer confusion between the two companies and their product lines. The USPTO Trademark Trial & Appeal Board (“TTAB”) agreed with B&B and denied the registration by Hargis.

However, Hargis has argued that its’ products are different from those sold by Sealtight and that Hargis’ customers are a different class of customers. Hargis has even won two jury verdicts in U.S. Federal Courts on this point. One judge even found that B&B attempted to manufacture evidence to bolster it’s trademark infringement claims.

With a split between the Federal Courts and the TTAB, the U.S. Supreme Court agreed to hear the case and decide who should have the final say on this matter.

The Supreme Court Hearings

The Justices heard an hour long oral argument last week on the issue.

Justice Sotomayor said that it only makes sense that the USPTO proceedings should be given some weight in Federal Court cases otherwise the agency’s powers would be rendered “almost irrelevant.” And the Obama administration argued in favor of B&B by claiming that the Federal Courts should defer to the USPTO on such matters.

However, Justice Ginsburg (along with some other Justices) showed some signs of agreement with Hagis. For example, Ginsburg made statements that implied that the USPTO proceedings might not have controlling effect in Federal Courts because the stakes in such cases are much higher than the stakes at the TTAB level.

As a result, it is not clear how the court will rule on this matter. The one thing we do know is that a decision is likely to be announced in June.

What This Means for You

The outcome of this case will almost certainly impact future trademark disputes. And the most important thing for you to take away from this current dispute is the importance of using appropriate guidance and assistance when dealing with trademark matters.

If you want to keep up with trademark law and learn how Federal registration can benefit your business, be sure to subscribe to Mighty Updates, the MightyMarks® email newsletter!

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Image: Thinkstock/Willard
*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.

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