BizTech Law Blog

The Lanham Act defines a trademark to mean “any word, name, symbol, or device or any combination thereof” used by any person “to identify and distinguish his goods . . . from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”  The Lanham Act permits the holder of a registered trademark to file a trademark infringement claim against any person who, without the registered trademark holder’s consent, (1) uses any reproduction, counterfeit, or copy of a registered mark; (2) in commerce; (3) in connection with the sale, offering for sale, distribution, or advertising of any goods or services; (4) where such use is likely to cause confusion, or to cause mistake, or to deceive.

The plaintiff in a trademark infringement claim must prove:

1. that it has a protectable ownership interest in the mark; and
2. that the defendant’s use of the mark is likely to cause consumer confusion.

A plaintiff must have a protectable trademark before claiming trademark infringement. For a trademark to be protectable, it must be “distinctive.”  A trademark’s distinctiveness measures its significance to the purchasing public.

Marks are generally classified in categories of increasing distinctiveness, including:

• generic;
• descriptive;
• suggestive;
• arbitrary; or
• fanciful.

Generally, the more likely a mark is to be remembered and associated in the public mind with the mark's owner, the greater protection the mark is accorded by trademark laws. Courts have stated that a mark’s conceptual strength depends largely on the obviousness of its connection to the good or service to which it refers. The less obvious the connection, the stronger the mark and vice versa.

Although the plaintiff bears the burden to prove that his mark is valid, federal registration provides proof of the validity of the registered mark and of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce, and entitles the plaintiff to a strong presumption that the trademark is protectable.

The main element of trademark infringement is the “likelihood of confusion” (i.e., whether the similarity of the marks is likely to confuse customers about the source of the products). In evaluating the likelihood of confusion between related goods or services, the following factors are considered.

• strength of the mark
• proximity or the goods or services
• similarity of the marks
• evidence of actual confusion
• the marketing channels used
• the type of goods or services and the degree of care likely to be exercised by the purchasers of the defendant’s product
• defendant’s intent in selecting the mark
• the likelihood of expansion of the product lines

If you have questions regarding trademark infringement please contact me.