What does this mean?
You could have a mark that’s not registered with anyone and it still be entitled to protections--these are common law protections.
Or you could federally register your mark with the USPTO.
Either way, you still need to make sure others aren’t infringing on your rights (whether federal or common law) and stop those who are infringing on your mark.
So what is “trademark infringement?” It’s the unauthorized use of a mark--any mark--in a way that could confuse a buyer. The “mark” here would be whatever your trademark is - it could be a logo, slogan, colors, design or even sound. It’s anything consumers might confuse with your trademark.
Does this apply to me?
Yes, if your mark is entitled to trademark protections. See if you might have those here.
Why is this mistake going to harm my business?
Here are the biggest reasons why protecting your trademark from infringement is important:
- Weakening of the mark
When someone infringes on your TM, meaning they use a similar mark or any mark that causes confusion with your mark, your mark necessarily becomes less and less distinctive. The more the infringing mark gets established with use (when you don’t stop it), the worse the confusion gets and the weaker your TM gets. The weaker your trademark gets, the more likely you are to not be able to enforce its protections.
Also, failure to protect you mark or act on infringement may be considered as evidence of abandonment. Remember that TM rights are only protected as long as you use the mark as a trademark. If you are deemed to have abandoned your mark, it means you are considered to have stopped using it. Consequently, the protection over your trademark stops as well.
- Loss of TM or TM Rights
The weakening of your trademark or abandonment, if you don’t do anything about it, can eventually lead to loss of your trademark rights altogether. What’s worse, the original infringer may end up with better rights than you in the end.
- Loss of income and/or reputation
TM infringement can affect your bottom line in 2 ways: loss of sales - when buyers get confused and buy the infringer’s product when they intend to buy yours - and loss of patrons when, thinking they got your product, they are disappointed by the quality of the infringer’s product they bought by mistake.
You could avoid all this by:
Searching for and ensuring no one is infringing on your mark. Use our scoresheet on possible infringement to help you gauge the probability of infringement by a given mark. You can also checkout our cheatsheet on the steps you can take to protect your trademark.
How can you tell if there’s been infringement?
Legally speaking, three elements must be met to prove that infringement has occurred.
- You have to own the mark - You must have a bonafide trademark: a mark that you use to identify the goods or products you offer to your customers. A trademark can’t just be a decoration; it has to be used on your products so that consumers know they come from your brand. This element is covered extensively in the trademark background materials, so we’ll focus on the last two elements below:
- Subsequent use - This element is very specific, and three requirements must be met:
- Subsequent use - The use must have occurred after you established your trademark. In other words, the infringer used the mark after you did.
- Unauthorized - Simply put, you did not authorize the infringer to use the mark. For instance, you didn’t create any type of agreement or license with the infringer.
- “In commerce” - The mark must have been used in commerce, meaning that the unauthorized use was in connection with the sale, advertisement, or distribution of products. If someone has used your trademark but it was not done in reference to the sale, advertisement or distribution of a product, the unauthorized use wouldn’t be considered infringement. One example of a non-authorized but non-infringing use would be a parody in which the use of your trademark involves humor or satire.
- The use of the mark must be likely to create confusion for buyers. - This means that the infringer’s use of the mark will cause consumers to be confused between your product and the infringer’s product. In that case, the infringer would likely be benefiting from using a mark that is infringing on your trademark. If there’s no confusion, there’s no trademark infringement.
How can you tell if there is a likelihood of confusion?
Courts that consider this question look at the following factors:
Here you need to look at two things in relation to each other:
- The distinctiveness of your trademark
If it’s strong and easily distinguishable, there’s a greater likelihood of confusion. If you have a completely arbitrary trademark like “Google” anything that sounds or looks similar will result in confusion. The logic is - you’re the only using that mark so if someone sees it on anything then you must have made it.
Contrast that with a generic mark, like an element in your mark that is associated with your type of product (regardless of who made it). If your mark is more generic, chances are there will be a lot of companies with similar marks. There’s less of a chance of confusion because the presence of that element in a mark doesn’t tell people about the source of the product: it could have come from any one of a number of companies.
Think of the word “coffee” or a picture of a bean for coffee shops: if you see it, you think coffee, not one particular coffeeshop. Contrast that with when you see an apple on any gadget, there’s only one company you’d think that gadget came from.
- The similarity of the two marks
The similarity we’re looking for is not simply looking alike; they don’t have to be identical. Similarity could also means the following:
- Are the dominant parts (what you would remember about the mark) of the marks are the same or similar?
- Do they mean the same thing? (in terms of connotation, meaning, or translation)
- If you read them aloud (when applicable), do they sound similar or the same?
- Do they contain the same words or characters rearranged?
- The distinctiveness of your trademark
Note: An exception to this includes famous trademarks. They are given more protection. The marks don’t have to be as similar for there to be infringement if the trademark is famous. If the trademark is famous, you won’t necessarily have to prove that the level of similarity causes likelihood of confusion; instead, you can just show that people are making money off of simply associating their products with yours. Good example, Charbucks was found to be infringing on “Starbucks” because the latter was famous. Same with “South Butt” and “North Face.”
- Relatedness of the products
Next, consider the products themselves that contain the marks. Are they the same or related, or are they completely disconnected from each other? If they’re related, it’s easier to think that they come from the same company. As an example, consider the Nike trademark. You see this trademark on many products from shoes to bags to clothes. If a competitor were to use a similar mark on socks, it would be easy for consumers to think that those socks were made by Nike. Consider instead that a bag of chips includes the Nike trademark. Most consumers wouldn’t assume the chips are related to Nike since the product is so dissimilar from the products that Nike typically sells.
- Usual/Target buyers
The type of buyer also matters. If a buyer is choosy when purchasing the product, they’re not as likely to be confused because they’ve spent considerable time researching the buying process. For instance, many consumers spend a great deal of time researching major purchases like cars or computers. On the other hand, if you’re in a store buying something fairly commoditized, like printer paper, you’re less likely to look at the packaging closely. In that case, there’s a great likelihood of confusion.
- Actual confusion
Finally, if you can show that buyers are already confused between your product and another product using your trademark, that’s virtually a slam dunk in proving the likelihood of confusion.
To sum up: Infringement is not just when someone uses the same trademark as you. It includes using a similar mark or any mark as long as the use will cause confusion in relation to your products or the infringer’s products. When you come across a mark that might be infringing your trademark, you can use what we discussed on how to spot infringement to see if you should take action against these marks.
Jude had a company called Templeton’s Donuts, which sold donuts to the residents of Columbia, South Carolina. A year after Jude’s company began, Jude’s best friend, Chris, bought a pig named Templeton and wanted to also open a donut shop named after his porcine.
Jude was fine with it and they both got along great for the first couple years until Chris got in a car accident that damaged his brain and turned him into a nightmare to be around. Jude and Chris had a falling out and Jude was sick of Chris stealing Jude’s goodwill generated from his donut shop so told Chris to cease and desist from operating his donut shop by the name the Templeton.
Chris hired an attorney and argued that Jude had abandoned any common law trademark rights by not enforcing his trademark infringement rights earlier. And that Chris had relied on Jude’s abandonment when establishing his own goodwill under the name “Templeton.” Chris’s attorney was right, and Jude could’ve prevented all of this by enforcing his trademark rights earlier against Chris’s company.