How do you know if your trademark is infringed by others or vice versa? We need to look at a number of factors. A court will apply the “likelihood of confusion” test in a trademark infringement suit. This means that a court will analyze and weigh factors to determine if consumers are likely to be confused by the two marks. Let’s take a look at some of these factors.
1. STRENGTH OF THE SENIOR MARK
The senior trademark is the one that was registered first or used first. The more distinctive is the senior mark, the more protected it is. How to determine “distinctiveness?” Courts normally will consider whether it is generic (not distinctive), whether it is descriptive (normally not distinctive unless it required secondary meaning), whether it is suggestive (distinctive), whether it is arbitrary (distinctive), whether it is fanciful (distinctive), etc.
2. RELATEDNESS OF THE PRODUCTS
This means whether consumer would connect the two products in their mind. So, if the products compete directly and they are similar, then consumers could be confused. If the products are somewhat related but not competitive, then confusion will turn on other factors. If the products are totally unrelated, then confusion is unlikely.
3. SIMILARITY OF THE MARKS
This is a factor that the courts usually give greater weight. The court will look at the pronunciation, appearance, and verbiage of conflicting marks. It will look to see if the given mark would confuse consumers when viewed in isolation and in its entirety.
4. EVIDENCE OF ACTUAL CONFUSION
The existence of actual confusion is direct evidence and will be weighted heavily when there is evidence of sufficient past confusion.
5. MARKETING CHANNELS USED
A court will evaluate marketing channels used by the business of the marks, for example, what market the two products are sold in, the type of business involved, the advertisement, the location, etc.
There are other factors courts will consider. It is wise to research before adopting a trademark. Once you have a trademark, you should vigilantly protect it. Otherwise, goodwill and business may be lost due to similar marks competing for the same customers.
Attorney Lei Jiang is a licensed patent attorney and litigator. She has handled many patent and trademark applications. Moreover, she handles patent and trademark infringement cases in federal courts. Any question, please contact us.
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