914-908-6757 anthony@vernalaw.com

What is Trademark Infringement?

Trademark infringement is the unauthorized use of a registered trademark or of a trademark that is confusingly similar to the registered mark. The unauthorized use may or may not be on the goods and services discussed in the trademark application; it may be on dissimilar goods and services under some conditions. The key result is confusion for consumers in the unauthorized mark.

The statute that authorizes a lawsuit for trademark infringement is Section 32 of the Lanham Act, 15 U.S.C. 1114. 

What is Trademark Infringement?

To establish a trademark infringement claim under section 32 of the Lanham Act or an unfair competition claim under section 43(a) of the Lanham Act, the plaintiff in a case must establish that the defendant is using a mark confusingly similar to a valid, protectable trademark of the plaintiff’s. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir.1979).

A court must first determine whether the plaintiff has a valid, protectable trademark interest in the mark at issue. A plaintiff’s registration of the mark on the Principal Register in the Patent and Trademark Office constitutes prima facie evidence of the validity of the registered mark and of the plaintiff’s exclusive right to use the mark on the goods and services specified in the registration. See 15 U.S.C. §§ 1057(b); 1115(a).

Nevertheless, the defendant can rebut this presumption by showing that it used the mark in commerce first, since a fundamental tenet of trademark law is that ownership of an inherently distinctive mark is governed by priority of use. See Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217, 1219 (9th Cir.1996) (“It is axiomatic in trademark law that the standard test of ownership is priority of use. To acquire ownership of a trademark it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services.”), cert. denied, 521 U.S. 1103, 117 S.Ct. 2478, 138 L.Ed.2d 987 (1997).

The first to use a mark is deemed the “senior” user and has the right to enjoin “junior” users from using confusingly similar marks in the same industry and market or within the senior user’s natural zone of expansion.  See Union Nat’l Bank of Tex., Laredo, Tex. v. Union Nat’l Bank of Tex., Austin, Tex., 909 F.2d 839, 842–43 (5th Cir.1990); Tally–Ho, Inc. v. Coast Community College Dist., 889 F.2d 1018, 1023 (11th Cir.1989); New West Corp. v. NYM Co. of Cal., 595 F.2d 1194, 1200–01 (9th Cir.1979).

The plaintiff must also show that the public is likely to be somehow confused about the source or sponsorship of the defendant’s trademark on its goods/services and somehow to associate that use of the trademark with the plaintiff. See 15 U.S.C. § 1114(1); 1125(a).

The Supreme Court has described “the basic objectives of trademark law” as follows: “trademark law, by preventing others from copying a source-identifying mark, ‘reduce[s] the customer’s costs of shopping and making purchasing decisions,’ for it quickly and easily assures a potential customer that this item—the item with this mark—is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product.” Qualitex, 514 U.S. at 163–64 (internal citations omitted). Where two companies each use a different mark and the simultaneous use of those marks does not cause the consuming public to be confused as to who makes what, granting one company exclusive rights over both marks does nothing to further the objectives of the trademark laws; in fact, prohibiting the use of a mark that the public has come to associate with a company would actually contravene the intended purposes of the trademark law by making it more difficult to identify and to distinguish between different brands of goods.

“The core 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.” Official Airline Guides, 6 F.3d at 1391 (quoting E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir.1992)) (quotation marks omitted); accord International Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 825 (9th Cir.1993); Metro Publishing, Ltd. v. San Jose Mercury News, 987 F.2d 637, 640 (9th Cir.1993).

Courts look to the following factors for guidance in determining the likelihood of confusion: similarity of the conflicting designations; relatedness or proximity of the two companies’ products or services; strength of the plaintiff’s mark; marketing channels used; degree of care likely to be exercised by purchasers in selecting goods; the defendant’s intent in selecting its mark; evidence of actual confusion; and likelihood of expansion in product lines. See Dr. Seuss Enters. v. Penguin Books USA, Inc., 109 F.3d 1394, 1404 (9th Cir.1997), petition for cert. dismissed by, 521 U.S. 1146, 118 S.Ct. 27, 138 L.Ed.2d 1057 (1997); Sleekcraft, 599 F.2d at 348–49; see also Restatement (Third) of Unfair Competition §§ 20–23 (1995). These eight factors are often referred to as the Sleekcraft factors.

A word of caution: this eight-factor test for likelihood of confusion is pliant. Some factors are much more important than others, and the relative importance of each individual factor will be case-specific. Although some factors—such as the similarity of the marks and whether the two companies are direct competitors—will always be important, it is often possible to reach a conclusion with respect to likelihood of confusion after considering only a subset of the factors. See Dreamwerks Prod. Group v. SKG Studio, 142 F.3d 1127, 1130–32 (9th Cir.1998).

Moreover, the foregoing list does not purport to be exhaustive, and non-listed variables may often be quite important. We must be acutely aware of excessive rigidity when applying the law in the Internet context; emerging technologies require a flexible approach.

Trademark Infringement is not a simple concept in trademark law.  If you have any questions about trademark infringement, please call Verna Law, P.C. at 914-908-6757 or send an e-mail to anthony@vernalaw.com.