| Trademark infringement claims are increasingly | | | | intent in selecting its mark; evidence of actual |
| common. This article describes the eight factors | | | | confusion; and the likelihood of expansion in |
| courts use to determine whether one entity has | | | | product lines. |
| infringed on the mark of another. U.S. trademark | | | | Some factors are much more important than |
| protection is granted to the first entity to use a | | | | others, and the relative importance of each |
| particular mark in the geographic area where it | | | | individual factor will be case-specific. Some of the |
| operates, regardless of whether the mark is | | | | factors relevant to determining the likelihood of |
| registered. | | | | confusion will always be important, such as the |
| Whether infringement has occurred hinges upon | | | | similarity of the marks and whether the two |
| the likelihood of confusion by consumers of the | | | | companies are direct competitors. Where the two |
| trademarks at issue | | | | marks are entirely dissimilar, there is no likelihood |
| The U.S. Supreme Court has described the basic | | | | of confusion. For example "Pepsi" does not infringe |
| objectives of trademark law as follows: | | | | Coca-Cola's "Coke." |
| "trademark law, by preventing others from | | | | Even in situations where a complainant's and an |
| copying a source-identifying mark, 'reduce[s] the | | | | alleged infringer's mark are the same, there may |
| customer's costs of shopping and making | | | | be no consumer confusion and no trademark |
| purchasing decisions,' for it quickly and easily | | | | infringement if the alleged infringer is in a different |
| assures a potential customer that the item with | | | | geographic area or in a wholly different industry. |
| trademark is made by the same producer as | | | | The more similar the marks in terms of |
| other similarly marked items that he or she liked | | | | appearance, sound, and meaning, the greater the |
| in the past. At the same time, the law helps | | | | likelihood of confusion. In analyzing this factor the |
| assure a producer that it (and not an imitating | | | | marks must be considered in their entirety and as |
| competitor) will reap the financial and | | | | they appear in the marketplace with similarities |
| reputation-related rewards associated with a | | | | weighed more heavily than differences. |
| desirable product. " | | | | A couple of interesting examples of identical |
| To establish a trademark infringement claim or an | | | | marks without consumer confusion concern hot |
| unfair competition claim a business must show | | | | dogs and pizza. In the case of Weiner King, Inc. v. |
| that another entity is using a mark confusingly | | | | Wiener King Corp., the court permitted concurrent |
| similar to a valid, protectable trademark | | | | use of "Weiner King" as a mark for restaurants |
| Registering a trademark on the Principal Register | | | | featuring hot dogs in New Jersey and "Wiener |
| in the Patent and Trademark Office constitutes | | | | King" as a mark for restaurants in North Carolina. |
| prima facie evidence of the validity of the | | | | Similarly, in Pinocchio's Pizza Inc. v. Sandra Inc., the |
| registered mark and of plaintiff's exclusive right to | | | | court permitted concurrent use of "PINOCCHIO'S" |
| use the mark on the goods and services specified | | | | as a service mark for restaurants in Maryland and |
| in the registration. A party can rebut the | | | | "PINOCCHIOS" as a service mark for restaurants |
| presumption that the registered trademark is valid | | | | elsewhere in the country. |
| and that registrant is entitled to exclusive use of | | | | The courts have stated that their analysis of the |
| mark by showing that it was the party which first | | | | eight factors is pliant, which means that there is |
| used the mark, not the registrant. This is true | | | | no bright line test. This is problematic for business |
| because a fundamental tenet of trademark law is | | | | owners whose trademark has great value. Due to |
| that ownership of an inherently distinctive mark is | | | | the absence of a bright line test trademark |
| governed by priority of use. | | | | disputes can rarely be solved without consulting a |
| Courts look to eight key factors for guidance in | | | | lawyer. This is not to say that all trademark |
| determining the likelihood of confusion | | | | disputes must go to court. Often, the disputes |
| In determining the likelihood of confusion in | | | | can be resolved without litigation. Large companies |
| trademark infringement actions the courts look to | | | | zealously guard their trademarks. If your |
| these eight factors: the similarity of the conflicting | | | | company receives a letter alleging you are |
| designations; the relatedness or proximity of the | | | | infringing on the trademark of another entity you |
| two companies' products or services; strength of | | | | should not take what you read as determinative, |
| the plaintiff's mark; marketing channels used; the | | | | but you should review the allegations with a |
| degree of care likely to be exercised by | | | | lawyer immediately. |
| purchasers in selecting goods; the defendant's | | | | |