Businesses and organizations invest time, money and effort into developing a brand, product line or a reputation in the industry. Think of a new start up on the Internet that spends on average $20,000 to $35,000 to get a new web site up, invests another $5,000 to $15,000 in online marketing and spends another $5,000 to $15,000 to successfully implement secure and reliable e-commerce activities via the web site. More important, that business relies on that web site have a registered and protected mark as valuable intellectual property.
In order to prevail on a claim under federal law, the owner of the mark must prove:
- Prior rights in a valid mark; and
- Infringer’s mark is so similar as to create a likelihood of confusion, mistake or deception.
Infringement — Confusion Factors
The factors to consider in determining the existence of a likelihood of confusion include:
(1) Fame & strength of distinctiveness of the protected mark;
(2) Similarity between the protected mark and the allegedly infringing mark;
(3) Similarity of the products (or services) that the marks identify;
(4) Similarity of the facilities the two parties use in their business;
(5) Similarity of the advertising used by the two parties;
(6) Intent of the alleged infringer; and
(7) Actual confusion.
Infringement — Fame & Strength of a Mark
The more distinctive the trademark is, the greater its influence in stimulating sales, its hold on the memory of the purchaser and the likelihood of associating similar designations on other goods with the same source. Strength of a mark depends upon its classification as generic, descriptive, suggestive, or arbitrary and fanciful.
Infringement — Commercial Strength
The extent to which mark has been used and advertised is also a factor to be considered in determining the strength of a mark. The Fourth Circuit upheld a finding that the mark GLASS DOCTOR was commercially strong because the owner “has done extensive national advertising” and “supports a 133-unit franchise.”
Infringement — Fame
The degree to which a mark has become well-known also influences the strength of a mark. Brand awareness studies that gauge how well the public recognizes the mark may be helpful.
Remedies for Infringement
The most common form of relief granted to a successful plaintiff in a trademark infringement lawsuit is an injunction against further infringement. If the infringed mark was federally registered, attorneys’ fees would also be available to a successful plaintiff. Monetary damages are also available under the Lanham Act, but in practice are rarely awarded in trademark lawsuits.
Last Modified: December 5th, 2009