How Do You Determine if a Trademark is infringing?

There is a compelling reason for companies to seek trademark registrations to safeguard their brands: money. Building a great brand necessitates a big financial investment. It’s crucial to get a return on that investment.

The right of those who created the brand to see the rewards of their labor is protected through registration, rather than possibly infringing parties. There is always space for error, especially among younger businesses that may not be familiar with trademark legislation or adequate clearance procedures, as well as those with more sinister intentions. Every day, whether on purpose or not, comparable brands appear on the market.

So how can you determine if a Trademark is infringing? You can start by understanding more about how infringement works!

Factors for Identifying Trademark Likelihood of Confusion

This is where the rules of trademark likelihood of confusion come in. Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d) states:

“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.”

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The ‘likelihood of confusion is the gold standard by which infringement is assessed in practically every region, but phraseology may vary. Many regions, notably the United States, have their own ‘tests’ for determining the likelihood of confusion with specific elements to measure.

These variables can vary depending on the facts of the case at hand, thus seeking counsel on the factors that apply to your region and circumstances is essential. Nonetheless, there are some general guidelines to follow:

Why Identifying Trademark Confusion Matters?

Making sure you understand what defines a likelihood of confusion is just as critical for your original name process as it is for any trademark monitoring you do. Obviously, you don’t want your trademark application to be turned down. Simultaneously, it is critical to ensure that no one infringes on your precious assets.

It’s vital to remember that trademark protection is about what the marks symbolize and depict rather than the marks themselves. You’d expect certain flavors and textures from a burger in a box that looks a lot like the ones Big Macs come in. However, if the burger isn’t authentic, your impression of Big Macs and McDonald’s will be tainted.

Protecting Profits & Brand Integrity

When your trademarks are infringed upon, there are a plethora of ways you might lose money, but these are the two most prevalent and serious:

  1. Losing direct sales
  2. Brand reputation gets damaged.

But first, let’s look at the factors that influence trademark probability of confusion, as detailed in the USPTO’s Trademark Manual of Examining Procedure:

The Factors for Identifying Trademark Likelihood of Confusion:

  1. Strength of the Mark

If a mark is descriptive but lacks secondary meaning, it is considered “weak.” When a mark has acquired secondary meaning or is arbitrary, whimsical, or provocative, it is considered “strong.” A weak mark’s owner will have a hard time showing a likelihood of confusion. The mark Maid in America, for cleaning services, for example, was considered to be descriptive. The owner was unable to show that secondary meaning was established by a substantial amount of promotion or sales. As a result, the trademark owner’s claim of infringement against a comparable mark was unsuccessful. A survey may be performed to prove secondary meaning if descriptiveness is an issue in an infringement case.

  1. The Similarity of the Marks

Marks must be compared in their entirety, including appearance, sound, connotation, and commercial impression, as a general rule. However, determining if two markings are identical may necessitate deconstructing and comparing each mark’s features.

The owner of the trademark OAG Travel Planner sued the owner of the trademark The Travel Planner in one case. The court found that the mark Travel Planner was descriptive and weak, but that the addition of OAG to “Travel Planner” resulted in an arbitrary mark. The court decided that the marks were likely to confuse buyers due to their visual and auditory similarities. In the case of cigars, a court established similarity between Dutch Masters and Little Dutchman due to the widespread usage of the dominant term “Dutch.”

Adding a prefix or suffix, rearranging letters, or adding explanatory information, on the other hand, may not be enough to prevent a claim of mark resemblance. The following markings, for example, were discovered to be similar: Magnavox and Multivox; Simoniz and Permanize; Platinum Puff and Platinum Plus; Zirco and Cozirc; Maternally Yours and Your Maternity Shop; Magnavox and Multivox; Simoniz and Permanize; Platinum Puff and Platinum Plus; Zirco and Cozirc; and Maternally Yours and Your Maternity Shop

Furthermore, the similarity of the meanings of the marks may be taken into account. Mr. Clean and Mr. Rust and Mr. Stain, for example, were thought to be similar, as were Thirty Forty Fifty and 60 40 20, and Pledge and Promise.

  1. The Similarity of the Goods

The infringement standard is whether an ordinary cautious purchaser would be likely to purchase one thing while thinking he was buying the other. When used on bleach, for example, Chlorite is likely to be confused with Chlorox. In general, a trademark owner is allowed to use a similar mark as long as the goods are entirely different. The usage of the Lexus brand on autos, for example, was determined not to mislead Lexis database users.

  1. Degree of Care Exercised By the Consumer

Depending on the purchase, the consumer’s degree of care differs. In general, a consumer choosing a high-priced purchase is more selective and less likely to be readily deceived by comparable marks. Because the buyer buys pricey products less frequently, this higher level of attention is warranted. As a result, the courts anticipate that when acquiring real estate services, insurance, or other “high price” commodities, such buyers will be more selective and source-conscious. In certain cases, the courts will demand stronger evidence of similarity to support a claim of likelihood of confusion. The same can be said about products purchased by “professional buyers.” A professional buyer is someone who comes to the store already knowing what they’re buying (e.g., a pharmacist, physician, architects, builders, etc.) Because of their improved expertise in purchasing selections, a professional buyer is less likely to be perplexed.

A regular shopper, especially one who buys cheap products on the spur of the moment, is the most likely to be confused by identical marks. This consumer, for example, may scan a grocery aisle fast and impulsively buy a carton of waste bags without realizing she is confused about the brands available. In this case, a lower level of caution has been used. As a result, less similarity may be required to establish the risk of confusion.

  1. Defendant’s Intent

Although the defendant’s intent is not required to prove infringement, it is a consideration to consider. It is appropriate to assess the defendant’s aim, according to the Restatement of Trademarks, because a party trying to generate confusion will almost always succeed. Due to the lack of direct evidence of the defendant’s intent to deceive, the plaintiff must rely on circumstantial evidence, such as how the defendant’s mark was chosen or whether the defendant continued to use the mark after the plaintiff’s warning.

  1. Actual Confusion

In order to determine trademark infringement, no proof of actual confusion is required. In an infringement case, however, such evidence may be persuasive. Surveys are sometimes conducted by businesses to determine the level of misunderstanding. These surveys are costly, and if done incorrectly, they could jeopardize the plaintiff’s case.