Likelihood of Confusion in Trademarks

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 What Is Intellectual Property Law?

Intellectual property law is the legal system that provides certain privileges and protections for owners and inventors of intellectual property. Intellectual property laws are intended to encourage and protect new ideas, the creation of new technologies, and artistic creativity for the economic growth of the United States. With intellectual property laws, an owner of the property will have the confidence that their creative work and ideas can be protected.

The following is a list of intellectual property that falls under the umbrella of intellectual property law:

What Is a Trademark?

As mentioned above, trademarks fall under the scope of intellectual property. In legal terms, a trademark is any word, phrase, logo, or other symbol that is used to identify a product and/or the source of a product. One of the main purposes of a trademark is usually used to distinguish one product and/or manufacturer from others. Trademarks can be owned by individuals, partners, or any legal entity, such as a corporation. Some of the most popular trademarks are recognized worldwide, such as the mouse ears, golden arches, etc.

Typically, in order to qualify for the full amount of protections granted to trademark owners in the United States, the trademark must first be registered with the U.S Patent and Trademark Office (“USPTO”). Once registered, the trademark will be protected for an initial period of 10 years, with the owner filing updates with the USPTO to show that the trademark is still in use. In order to become registered with the USPTO, a trademark cannot:

  • Be identical or similar to an already existing trademark or related service/goods;
  • Be on the list of prohibited trademarks or on the reserved list of trademarks; or
  • Be too descriptive and not qualify for protection.

After the trademark is registered with the USPTO, the owner will be protected against other individuals or businesses who would want to copy or duplicate the trademark. Further, all of the country will be considered to have been put on notice that the specific trademark has already been created and registered.

It is important to note that before registering a trademark, one should conduct a search through the USPTO to determine whether any other individual or entity is already using the trademark. It is especially important to not copy or utilize another’s registered trademark, as doing so could result in being sued under the theory of trademark infringement.

What Is Trademark Infringement and Dilution?

Intellectual property in the United States is protected from other persons or entities taking, using, misappropriating, or otherwise stealing property that is protected under intellectual property laws. Once again, the USPTO offers protections for a registered trademark if another person or entity uses it without permission. This means that once registered, a trademark is protected from:

  • Infringement: Trademark Infringement occurs when another person or entity uses the same or similar trademark for a similar good or service for economic means. For example, if an individual or entity knowingly copied a company’s logo and uses the logo on their own items without the original owner’s consent to do so, that would result in being charged with trademark infringement; and
  • Dilution: Trademark dilution occurs when another person or entity uses a well-established trademark for a different service, but in doing so either tarnishes the trademark’s good name or weakens consumers’ association between the trademark and the services being provided.

It is important to note that intellectual property laws prescribe harsh penalties for intellectual property theft. Further, intellectual property theft and infringement violations are generally charged as federal crimes, but may also carry charges from the state in which the trademark is used or the infringement occurred.

Examples of potential legal consequences of trademark infringement include, but may not be limited to:

  • Criminal fines set by statute for each violation;
  • Imprisonment of up to several years. Importantly, this punishment is rare and typically reserved for infringers that are using another’s mark to sell counterfeit goods;
  • Probation for up to 120 months;
  • An injunction letter that directs the infringing party to cease and desist their use of the mark.
  • An injunction letter or a cease and desist letter is the most common penalty for trademark infringement, as it demands the infringing party cease using the trademarked material or face further penalties;
  • Loss or suspension of a business operating license; and/or
  • Civil charges filed by the owner of the trademark, such as a civil suit for trademark infringement.

In order for a trademark owner to prevail in a civil case of trademark infringement against an infringing party, the owner must prove the following three elements to the court:

  1. The trademark owner (plaintiff) must prove they own a valid trademark;
  2. The trademark owner must prove that the defendant used the same or a similar trademark in commerce without the owner’s consent or license; and
  3. That the infringing party’s (defendant) use of the trademark caused a “likelihood of confusion.”

Once the owner proves all of the above elements, the infringing party will likely receive an injunction to cease their use of the mark and close their business, as well as pay civil damages based on the amount of losses demonstrated by the trademark owner. If it is proven that the defendant acted intentionally in violating the trademark, the court may also award damages that exceed the amount of the monetary loss shown by the trademark owner.

What Qualifies as Confusingly Similar or a Likelihood of Confusion?

As can be seen above, “likelihood of confusion” is one of the three elements of trademark infringement that must be proven by a trademark owner to prevail in their case. In determining whether or not something qualifies as confusingly similar or creates a likelihood of confusion, courts will ask certain questions and evaluate the following criteria:

  • What is similarity of the trademarks with respect to appearance, sound, connotation, and impression? If a simple side by side viewing of the trademarks would lead an individual to believing they were the same company, trademark infringement is likely.
  • What is the similarity of the goods or services? For example, if there is an individual in Utah with the last name McDonald who performs auto services, there would likely not be confusion as to whether or not the Mcdonald’s corporation is behind “Mcdonald’s Local Auto”
  • What is the strength of the competing trademarks? When one mark is so unique and famous, any other marks attempting to use the mark will likely be considered to infringe on that original mark. Having an auto shop called Coca-cola auto shop, regardless of one’s last name, will likely not be allowed.
  • Is there any evidence of actual confusion by a consumer? If the trademark owner can demonstrate evidence of consumers being misled, such as them asking if the company is behind the other goods/services, then the trademark infringement suit will likely succeed.
  • What is the number and nature of similar marks on similar goods? Less unique trademarks such as “good value” may be utilized by many companies, and, thus, an owner of such a mark would have to likely demonstrate other evidence constituting a likelihood of confusion to prevail.
  • What is the length of time of concurrent use without actual confusion? The longer the use, the less likely infringement will be found.
  • What is the variety of goods with which each of the marks is being used? The broader the market is, the more likely that the goods may be found confusingly similar.

As can be seen, if a trademark is confusingly similar enough to deceive or confuse any significant number of consumers, then trademark infringement will likely exist. Further, the more unique the mark, the greater the likelihood that trademark infringement would exist.

For example, the use of the Google trademark or work Google being used by any other person or entity for commercial purposes, would likely result in infringement, as the mark is s
o unique and well known that any consumer would associate it with the original trademark owner.

Do I Need A Lawyer For Help With Likelihood of Confusion in Trademarks?

If you have any questions, concerns, or disputes associated with trademark infringement, you should hire an experienced trademark attorney in your area. An experienced attorney will be able to help you understand your legal rights and options according to both federal law and the laws of your specific state.

Further, an attorney will be able to advise you as to whether or not your mark is likely to cause confusion given the presence of another mark. Finally, an attorney will also be able to represent you in court, as needed, should the need for legal action arise.

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