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Things every client should know about trademarks

What legal rights does a trademark owner have?

The trademark statute (i.e., the black-letter text of the Trademark Act, also known as the Lanham Act, appearing at Title 15 of the United States Code) contains several provisions which answer this question for different kinds of registered and unregistered marks. The following language from the statute, however, will give the reader a very good idea of the general nature of the rights conferred upon the trademark owner against an infringer:

Any person who, on or in connection with any goods or services,… uses in commerce any word, term, name, symbol, or device, or any combination thereof,… which… is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person… shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.” Title 15, UNITED STATES CODE, § 1125(a)(1), Lanham Act § 43(a)(1) (emphasis added).

Thus, the legal test is likelihood of confusion. That is, if Alpha Corp. is the first to adopt and establish use of and ownership of a particular trademark for a particular set of goods, and, at a later time, without permission, Beta Corp. adopts a trademark for its goods which is likely to cause confusion as to the affiliation, connection or association of the two companies, then Beta Corp. will risk being sued for trademark infringement.

How do the courts determine whether there is a likelihood of confusion? In a nutshell, the courts will consider any factors that are relevant to the issue of whether there is a likelihood of confusion between the use of the first-comer’s mark (typically the Plaintiff’s mark in a trademark infringement lawsuit) and the use of the second-comer’s (typically, the Defendant’s) mark. However, although any relevant evidence will be considered, over time, a number of factors have come up, time and again, in the leading court decisions. Examples of those factors include:

(a) the similarity of the trademarks or service marks (occasionally referred to in older decisions as the “sight, sound, and meaning” test);
(b) the similarity of the goods / services offered under the marks;
(c) the similarity of the marketing channels used (e.g., retail outlets, nature of purchasers and their purchasing patterns, advertising media);
(d) the degree of care exercised by consumers;
(e) the strength of the Plaintiff’s mark (strength potentially relates to both legal strength and market strength (i.e., name recognition));
(f) the intentions of the Defendant in selecting its mark (did the Defendant know about the Plaintiff’s mark and intentionally adopt something similar?); and
(g) any evidence of actual confusion.

Thus, if you engage a trademark attorney to advise you regarding whether one party’s trademark constitutes an infringement of another’s, a detailed review and analysis of factors similar to those listed above will very likely constitute an important component of the engagement.

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