Trademark Infringement Defined
Commercial detriment by way of confusing or misleading the public is the broad based reason for bringing a trademark infringement action, in protecting one’s commercial value of names, words, symbols, etc. The starting point is with the Federal Lanham Act, which provides several causes of action for trademark owners. Under section 32(1), which is for federally, registered trademarks and section 43(a) for owners of unregistered trademarks. Both causes of action provide for preventing actions that cause confusion as to source or origin and similar misrepresentations as to the nature or quality of goods or services.
Other causes of action, such as dilution allow for a claim to be made in the absence of confusion with a famous mark, (see dilution page for more detail) and anti cybersquatting for domain name protection (see Internet Specific Issues under Intellectual Property Protect for more detail). Also, there are some state causes of action and the use of unfair competition especially for non-registerable items such as an individual’s name or likeness that are used without permission or tarnished by an infringer.
Both sections 32(1) and 43(a) of the Lanham act provide for similar protections, with section 32(1) being more specific with regards to causing confusion as to source or origin and requires a federal registration for an action to be brought. Section 43(a) covers the same causes of action as 32(1) and adds misrepresentation in advertising and promotion that represents the origin of goods or services. Usually both sections are asserted in order to cover the situation where a federal trademark registration may be invalidated due to a defect in registration or use causing a dismissal of section 32(1), which will leave a broader cause of action remaining under 43(a). One might ask why even bring an action under 32(1), the reason is the elements of proof with a registered trademark are easier to prove due to a number of presumptions that come with registration.
Likelihood of Confusion
This is the basis of any trademark infringement action wherein there is a likelihood of consumer confusion as to origin or source of the associated goods and services to the trademark. The following factors come into play in determining likelihood of confusion:
- The strength of the plaintiff’s mark with arbitrary and fanciful marks being high in strength, as compared to descriptive marks having lower strength.
- The degree of similarity between the marks, often called the sight, sound, and meaning rule.
- The proximity of the marks associated goods and services.
- The likelihood that the plaintiff will expand into the defendant’s goods and services.
- Degree of actual confusion amongst consumers, shown by actual evidence.
- Defendant’s good faith in adopting the similar mark, i.e. is the defendant intentionally using the plaintiff’s goodwill in consumer mark recognition.
- The quality of the defendant’s products in relation to the plaintiff’s.
- The sophistication of the consumer, how specialized is the product, as a highly specialized product or service assumes a more knowledgeable consumer and thus a more similar mark may be acceptable.
Note that items 2 and 3 exist in an inverse relationship in that the closer the similarity of the marks their respective goods and services must be further apart to not find infringement. Also the more dissimilar the marks are the closer their respective goods and services can be to not find infringement.
When a trademark claim is asserted under section 43(a) where there is not a federal registration, the unregistered trademark owner must show that the mark has acquired a secondary meaning, in the market place in its association with particular goods and services. Alternatively, the unregistered mark owner can show that the mark is inherently distinctive i.e. a strong mark because it is arbitrary or fanciful. This points out one of the benefits of federal registration, in that mark ownership and distinctiveness or secondary meaning need not be proven from the ground up as federal registration gives the trademark owner presumptions of ownership and validity. In any case, secondary meaning considers the following factors:
- The age and history of the mark.
- The amount of effort and expenditure used to promote the mark as a name or symbol distinctive of the plaintiff’s goods in commerce.
- Unsolicited coverage of the mark.
- Instances of attempts by competitors to imitate the mark.
Note that it is not necessary to show intent or fraud, in other words the offending mark of the defendant could have been independently created with no intent to use your customer good will with the same consequences of causing confusion as to source or origin.
Defenses to Trademark Infringement
Defenses include that there is no likelihood of confusion between the marks, or having differences between the marks, or having differences in the associated goods and services, and a high level of purchaser sophistication can enhance this defense. Proof of the aforementioned could be in the form of a consumer survey. Other defenses include parody and satire, which can be more successful if the parody or satire is particularly obvious.
As in the patent world, the validity of the trademark itself can be attacked by showing lack of candor with the Trademark Office, either through false affidavits of use or other misrepresentations to the Trademark Office. Another avenue of trademark attack is to show that the mark has been abandoned through non-use or through improper use such as naked licensing. This is also related to letting the trademark go “generic” by having it publicly used as a noun (name) instead of a adjective (descriptor), in other words if the consumer identifies the mark with the product, it is generic, if the consumer identifies the mark with the company it is not generic.
Other defenses include, latches or estoppel if the mark owner has failed to be diligent in enforcing their mark’s rights, or has made implied representations that use of their mark by others is acceptable, or has made misrepresentations as to origin or source regarding their own mark (the clean hands doctrine). Also, if the mark has been associated with goods and services other than what is was registered for, the owners rights are reduced to common law and the benefit of federal registration will be lost. Anti trust is another defense if the mark has been misused in a way to unfairly restrain competition, fair use protects another’s use of your mark when your mark is used not to indicate source or origin (in a traditional trademark sense) but is used to describe the goods or services, or a geographic location (using a trademark is a non traditional sense). Another fair use termed “nominative” is to use another’s mark for good or service comparison, which requires;
- The product or service in question must not be readily identifiable without the use of the trademark.
- Only so much of the mark may be used as reasonably necessary.
- The mark user must not suggest an inappropriate association with the mark owner such as sponsorship or endorsement by the mark owner.
Innocent prior use can be a defense in a situation where someone adopted a mark without prior knowledge of your mark before your mark was registered, wherein the prior user will retain trademark rights in their specific geographic area of prior use.
Free Speech can be asserted in using another’s mark, if the use is artistic, or non-commercial in nature, also if the trademark is functional, say in the case of trade dress, validity can be challenged.
Other ancillary defenses against unregistered or contestable marks that are less that 5 years from registration are, are immoral, deceptive, scandalous, suggest a false connection with a person or entity, flags, geographic references, a coat of arms, completely descriptive, or a surname.
Include, injunctions, lost profits, other damages, and attorney’s fees. Damages awards have a fair amount of judicial discretion, and can be difficult to prove with a nexus to the actual confusion related to source of origin related to the mark. Attorney’s fee awards require willful acts on the part of the infringer.