Infringement

It is trademark infringement for someone else, an infringer, to use the same or a confusingly similar term, on the same or closely related goods or services, in the same geographical area or within a natural area of expansion.

In general, a trademark can be infringed in two ways:

1) LIKELIHOOD OF CONSUMER CONFUSION

A likelihood of confusion occurs when a third party uses a mark that causes consumers to mistakenly believe that the third party’s product is in some way related to another’s goods or services.

Factors to consider:

§ Similarity in sight, sound, and meaning

§ Proximity of the goods and services (related nature of the goods and similarities between trade channels)

§ Sophistication of the relevant consumers

§ Strength of plaintiff’s mark (fame and length of use of the trademark owner’s mark)

§ Evidence of actual consumer confusion

§ Defendant’s good faith in adopting the mark

§ Quality of defendant’s products or services

2) DILUTION

Under the Federal Trademark Dilution Act, which became effective in 1996, the owner of a famous trademark is entitled to stop another's commercial use of that mark if it causes "dilution of the distinctive quality of the mark."

The owner does not have to prove that consumers are confused by that use -- a requirement that must be met under the harder-to-win charge of trademark infringement.

First, to assert a dilution claim, a trademark owner must establish that its mark is famous. Examples of famous marks include: KODAK, DUPONT, and BUICK. The Lanham Act sets out eight factors in § 43(c) to consider in determining whether a mark is famous:

1. Distinctiveness of the mark

2. Duration and extent of use of the mark

3. Extent of advertising and publicity of the mark

4. Geographical extent of the trading area in which the mark is used

5. Channels of trade for the goods or services

6. Degree of recognition of the mark

7. Extent of the use of same or similar marks by third parties

8. Whether the mark is registered

Second, a plaintiff must demonstrate that the defendant has actually diluted the distinctiveness of its mark, which can be done in one of two ways:

1. Blurring (when a third party uses a famous trademark to identify wholly unrelated goods.)

2. Tarnishment (when a party uses a famous mark in a degrading or derogatory manner which would give the trademark a negative association.)

DEFENSES TO INFRINGEMENT

Not all uses of another’s trademark constitute infringement.

1. Fair Use of Descriptive Marks or Personal Names

2. Use of a Trademark by a Dealer or Repairer of Goods

3. Criticism or Parody

Back to Registering