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What are the 8 Elements used to Determine Infringement of a Trademark?

F. Michael Ayaz

A business’s trademark is extremely important. The symbol of a company is often what the public notices and recognizes, and it is one of the most central parts of a business’s brand. Trademark law protects a business’s trademark from being stolen or copied by another company.

Trademark law can be a bit complicated. Protecting your brand is essential, but it can be difficult to prove that trademark infringement has actually happened. After all, some designs are similar without being stolen or copied. Though trademark law tries to mitigate the frequency with which similarities occur, they are bound to show up from time to time.

If you think trademark infringement has occurred against your company, or if you wish to avoid committing trademark infringement, it’s helpful to understand how infringement is determined. There are eight categories the court will assess to see if the trademarks are too similar or if they are both legal. Understanding these eight categories is essential for your business.

  1. Strength
    The first step for determining trademark infringement is assessing the strength of the original mark. Whichever item was trademarked first is assessed for its distinction or strength. The stronger it is, the more difficult it is to copy on purpose.
    For example, if a business has trademarked their logo that is the letter “B” in Times New Roman inside of a circle, it has low strength. There is not much about the trademark that is unique, distinct, or hard to replicate.
  2. Similarity
    The court will then assess the actual similarities between the two trademarks in question. Factors that the court assesses include: 

    • Appearance
    • Pronunciation
    • Verbal translation

    In many of these cases, it’s the details of the marks that matter most.

  3. Product Relation
    The industry of the products matters as well. If two trademarks are similar but in vastly different industries, there is less chance that one will be confused for the other — but industry isn’t the only relationship that matters. The court assesses whether the two products could be conflated or related in consumers’ minds.
    For example, if a law firm and a ketchup brand have similar logos, it’s unlikely that consumers will mistake one for another as they are rarely used in the same context. However, if a ketchup brand and a paper plate brand have similar logos, they may be related in the minds of the consumer when it comes to picnics and barbecues. If two ketchup brands have similar logos, it’s likely that confusion will occur.
  4. Actual Confusion
    The court will look at situations in which confusion has actually occurred as the result of the two products’ trademarks. If there has been confusion in the past about the two products, or if a consumer has had an issue as a direct result of the similarities, the trademarks may be too similar.
  5. Purchaser Care
    During this process, the court must assess whether consumers will likely give their purchase a significant amount of care. If both products are small ticket items that are similar, the consumer may not pay close attention when making a selection. For example, a purchaser could reasonably choose the wrong ketchup if the labels were similar enough.
    However, if one or both of the objects are significantly expensive, the consumer is likely to see the distinction in price and be more careful. For example, if two TV brands have similar logos, the consumer will likely still pay attention to which brand they’re buying. They will not rely on the logo alone to make their selection.
  6. Marketing Channels
    If two trademarked products use the same channels to market their product, they could run into added confusion and consumer mistakes. If the two products market differently and to different demographics, there is less of a chance that the two companies will be confused for one another. This also applies to the markets in which the items are sold. If one product can only be found at a specialty store while the other is stocked at most big box stores, confusion is less likely.
  7. Intent
    As with many legal cases, intent is important. If the second trademarker purposefully created its trademark to cause confusion or to take advantage of the other company’s success, that may be sufficient proof that infringement has occurred. Even knowledge of the original mark can suggest intent. If the second trademarker had never heard of or seen the original brand, though, there was likely no intent to copy their work. The similarities would be entirely coincidental.
  8. Expansion
    The court will also assess whether one or both companies will likely expand to overlap with one another. This overlap could occur in the type of products that the companies make, the markets that they sell in, or the regions where their products are popular.The cases that assess the similarities between trademarks depend on the details of the individual case. There’s no simple way to determine whether two similar trademarks are legal or if infringement has occurred. The industry is fairly complicated, and each case progresses differently.

Hiring a Trademark Attorney

Though it’s possible to undergo the trademark process on your own, it’s important that you find an attorney to help you. There are many ways your trademark can be denied or inadvertently infringe upon another business. The trademark office involved in trademarking does not enforce trademark law on its own, so companies must find and prosecute infringement independently. To protect yourself from what could be a lengthy and expensive claim, it’s best to have an experienced trademark attorney to help you through all steps of the process.

Get in Touch With Blake & Ayaz

When it comes to trademark law, no firm is more qualified than our team at Blake & Ayaz. We specialize in business and trademark law, giving you the niche set of knowledge that you need to successfully run your business and obtain your trademark. We have seen cases of all kinds, and we can help you to navigate whatever situations may arise.

For more information, contact us.

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