What is Trademark Infringement? Trademark Infringement Assessment

If the respective trademarks and products or services are completely different, there may still be trademark infringement under the Paris Convention if the registered trademark is a well-known mark. In the United States, the cause of action for using a trademark for such different services is called trademark dilution.

In some jurisdictions, if the owner fails to do so, a party other than the owner (e.g., a licensee) may be able to bring a trademark infringement action against the infringer.

factor

The courts will consider a variety of factors to determine whether a trademark has been infringed.

● Whether the plaintiff owns a valid trademark. A trademark can be valid because it is formally registered or because it has claims under common law.

● Whether the trademark is used by the defendant.

● Whether the defendant’s use of the trademark is “commercial use”.

● Whether the use is related to the sale, offer, distribution or advertising of the product.

● Whether the defendant’s use of the trademark is likely to confuse consumers.

The last factor, consumer confusion, is the main topic of debate in most cases.

Consumer confusion

When the respective marks or products or services are not identical, similarity is usually assessed by reference to whether there is a likelihood of confusion that consumers would think the products or services are derived from the mark owner.

If two products do not directly compete with each other but are in adjacent markets, the likelihood of confusion is not necessarily measured by actual consumer confusion. To determine consumer confusion, then, the court may apply one of a variety of factor tests. The primary test comes from the Ninth Circuit Court of Appeals and can be found in AMF, Inc v. Sleekcraft Boats , 599 F.2d 341 (CA9) 1979. That court announced eight specific factors to measure the likelihood of confusion:

● Marking intensity

● Cargo proximity

● Similarity of markup

● Evidence of actual confusion

● Marketing channels used

● The type of goods and the degree of care the buyer is likely to exercise

● The defendant’s intention in selecting the trademark

● Possibility of product line expansion

Other courts have developed their own likelihood of confusion tests, such as those announced in In re EI du Pont de Nemours & Co. , 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), collectively known as the DuPont factors.

defense

If a party accused of infringement can establish a valid exception (e.g., comparative advertising) or defense (e.g., laches) to infringement, or attack and cancel the underlying registration (e.g., non-use), it may be able to defeat the infringement proceeding on which it is based. Other defenses include genericity, functionality, abandonment, or fair use.

worldwide

The ACTA trade agreement, signed by the United States, Japan, Switzerland and the European Union in May 2011, requires its parties to increase criminal penalties for copyright and trademark infringement, including prison sentences and fines, and obliges them to actively enforce the law against infringements.

In many countries (but not in countries that recognize common law trademark rights, such as the United States), an unregistered trademark cannot itself be "infringed" and the trademark owner cannot bring an infringement action. Instead, the owner may be able to bring an action under common law for passing off or misrepresentation or under legislation prohibiting unfair business practices. In some jurisdictions, infringement of trade dress may also be actionable.

Notable Cases

● Facebook, Inc. v. Power Ventures, Inc.

● Google, Inc. v. American Blind & Wallpaper Factory, Inc., in which Google's AdWords program was alleged to infringe trademark rights

● Rescuecom Corp. v. Google Inc., use of trademark in Google's AdWords program was deemed "use in commerce" under the Lanham Act

● Network Automation, Inc. v. Advanced Systems Concepts, Inc., in which it was found that the use of a competitor’s trademark as a search keyword in an Internet advertisement did not constitute trademark infringement

● College Network, Inc. v. Moore Educational Publishers, Inc., where use of a competitor’s mark did not qualify as “use in commerce”

● Polaroid Corporation v. Polarad Elects