Watson LLP - March 2020


March 2020

IP Litigation & Government Investigations • Videogames & eSports Cyrptocurrency & Virtual Currency • Data Privacy & Breach Response • Intellectual Property Licensing • Patent Prosecution • Trademark Prosecution • Copyright Registration

(844) 714-8402


HAS YOUR TRADEMARK BEEN INFRINGED UPON? T rademarks can really boost your business, as they establish your brand and company as an authority in your industry. However, if your trademarks aren’t discernible from other companies’ trademarks, it can dilute the impact of your brand, resulting in fewer sales and possible trademark infringement lawsuits. By better understanding how trademark infringement works and when it’s happening to you, you’ll be able to boost your sales and place your business at the top of the list. According to the United States Patent and Trademark Office, trademark infringement is “the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.”

color, you will need to list a specific color code in your trademark filing because if you don’t, you’re essentially telling the trademark offices the color of the trademark doesn’t matter, and that will weaken your case. Similarity of Services or Products Provided

But the overarching test that all courts in the United States use to determine trademark infringement is the “likelihood of confusion” test. This test is a list of 8 to 13 factors that can help determine whether or not a trademark is infringing upon another. Not every factor is listed here, but the five we feel are the most important are explained in more detail below. Strength of the Mark Knowing the difference between strong and weak trademarks is the first step in building a case. A strong mark is one that is distinctive or suggestive (suggesting, not describing, a connection to your goods or services). By contrast, a weak mark is generic or descriptive, such as using the phrase “world’s best” to describe your product. A great example of a strong mark would be Apple’s famous apple logo. They sell computers, not apples, but because the company is so well branded and popular, almost anyone in the world can identify an Apple product just from the logo alone. This single trademarked item has boosted Apple’s sales and made it a recognizable company in the growing tech industry. Similarity of the Marks

If two companies provide a completely dissimilar service or product, an infringement case may not stand. An example of this is Lexus, the car company, and Lexis, the database company. Though their trademarked names sound similar, they provide completely different products and services, and there is almost no room for confusion for an average consumer. An example of trademarks attached to similar products was in 2006, when a court opposed Audio BSS USA’s trademark registration because it was too close in appearance to Boss Audio Systems’ trademark. Because both companies provide audio-related products, it was ruled that an average consumer would be confused and purchase the wrong product. Defendant’s Intent According to the Restatement of Trademarks, it’s appropriate to consider the defendant’s intent. Typically, if a company is intending to cause confusion between two brands, they will be successful in doing so. Unless there is a clear record of the defendant ignoring requests to change their logo, it’s typically harder to build a case around this factor. Actual Confusion

As a general rule, all features of both marks will be compared during a case. These features include but are not limited to sound, color, and typeface, depending on the trademark itself. If you have a

A case for actual confusion is where it looks and feels like infringement, but there isn’t any tangible evidence. In many cases, proof of actual confusion is nonessential

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