Is My Trademark Being Infringed?
By Mark Levy
Designed to protect ownership of words, names, logos, shapes, sounds and even odors, trademarks are a truly great legal invention. Once registered with the federal government, trademarks under U.S. law can theoretically provide protection forever - as long as the owner continues to use the mark in trade and pays the renewal fee every 10 years.
Used throughout history from Greek and Roman times, marks for many centuries have proven authenticity, ownership and quality on products ranging from pottery, to jewelry, to even quarried stone. Thus the idea of distinctively marking products to distinguish them from competition makes the trademark the oldest and most pervasive form of intellectual property.
Codified into law by the U.S. in 1870 - relatively late compared with European countries - trademarks have seen an explosive growth. According to the Brand Names Education Foundation (BNEF), the average supermarket today carries 90,000 separate branded items, up from 15,000 only 25 years ago.
Ironically, more safeguarding hasn’t necessarily provided more protection. As we all know, imitations, counterfeits and knock-offs are too common. Watches, blue jeans, computers, movies, music - virtually no successful product is immune. Product counterfeiting worldwide is a $60 billion industry, costing legitimate manufacturers 130,000 jobs a year.
PRIMARY TESTS OF TRADEMARK INFRINGEMENT
Suppose you’ve adopted a trademark for a product or invention. You’ve expended tremendous resources getting your brand established. Suddenly you discover someone else is marketing a product with a trademark very similar to yours, or is marketing a product different from yours but with the same or very similar mark.
Is your trademark being infringed? How would you know? While the tests for proving (or disproving) trademark infringement can be extremely complicated, following are the two main areas on which you should focus. Remember, I’m just scratching the surface of trademark law. For more information regarding your particular situation, do more research online or at your library.
1) Likelihood of Confusion
You can’t make, sell or name a product or product attribute that’s likely to be confused with someone else’s product or product attribute, and vice versa. Unfortunately, while this potential infringement issue is easy to understand, it can sometimes be difficult to prove.
Suppose you’re getting some competition with your product or brand name. As long as there’s no likelihood of confusion between the marks, then it’s business as usual for you both. However, if your competition’s widget and/or brand name is similar to yours - knowingly or unknowingly - then there may be infringement.
Examples are several incidents of individuals trying to bank on the established name of Microsoft, Inc., by using confusingly similar tactics. Several years ago, a small company came up with the name “Microsof.” While the two company’s names were different for sure, a one-letter difference, or substituting letters like ph with f , or using a mark that sounds like someone else’s, usually crosses the infringement line. So the new company had to abandon its clever name - which was actually created to drive poor spellers to their website to drive up advertising revenue. More recently is a murkier infringement matter in which a software developer actually named Mike Rowe created the website “mikerowesoft.com.” While Microsoft has aggressively pursued the matter to build an infringement case, their side is weakened because the case involves someone’s uniquely given name. It remains to be seen which side will prevail.
2) Channels of Commerce or Trade
This is where you have identical names being used in totally different lines of business. It’s why you can have Domino® brand sugar, Domino® brand pizza, and Domino® brand software and no infringement is occurring between or among them.
It’s also why we see Cadillac® brand pet food and Cadillac® brand automobiles, and there’s no confusion or infringement with these as well. Why not? Because the courts look at how close one mark is to another within their channels of commerce. Even if the mark is spelled the same and pronounced the same, as long as it’s in a different channel of commerce there’s usually no likelihood of confusion in people’s minds. People simply know a company that makes automobiles would not be catering to canines.
However, like all forms of intellectual property, trademark law is a moving target. Somewhat contrary to what I just said about same marks being usable in different channels of commerce is the case of the two WWFs. As recently as 1994, the acronym was used under mutual agreement by both the World Wrestling Federation and the World Wide Fund for Nature, which had adopted it first. Then came the Internet. Suddenly WWF became significant to web surfers, and the wildlife charity felt the wrestling entity’s wwf.com was likely to be confused with wwf.org. Taking the wrestling organization to court, the charity prevailed.
HOW CLOSE CAN I GO BEFORE I’M INFRINGING?
You definitely want to stop people from infringing on your brand’s territory. Conversely there are cases in which you may want - or need - to come as close as possible to another’s trademark while staying out of infringement hot water.
One reason could be you established your product on a small, local scale with little or no trademark protection. So before you spend big money getting it into the big leagues, you need to know if your use of your mark would infringe someone else’s mark. In this case, apply the same tests I mentioned earlier - avoid a likelihood of confusion and/or determine whether you’re in the same channels of commerce.
SOME FINER POINTS
Another reason to see how close you can legally come to someone else’s mark could be simply that your naming is so clever, obvious or desirable you really want to pursue it. This very thing happened at a new business I know that created a company name was very similar to the product name of another company operating in a different business. Several years later, the new company received word from the older company threatening court action if the newcomers didn’t pay a royalty or shut down its website. Unfortunately for the older company, they neglected to notice the new company had established a trade name - which is a total departure from trademarks. Not to mention, the companies were doing business in separate channels of commerce.
Remember, trademarks identify goods or services. A trade name isn’t a product name. You are allowed to have a corporate name - even a domain name - that’s similar or identical to someone else’s product name as long as you’re not using it in a trademark sense.
Another wrinkle in your favor is where letters or names are parts of other names by coincidence. As some of you know I’m a member of Mensa, the high-IQ society. I have this quirky friend who, while smart enough to join, never did, but liked to show off. One day I parked my car which has a Mensa license plate holder. Unknown to me he added letters to make the plate say ‘Carmensandiego,’ which includes the word mensa in the middle. I bring this up because had this been a trademark issue, such usage is not forbidden. Companies cannot claim wholesale ownership of letters that coincidently might be parts of other names.
NEW GROUND ONLINE
Certainly the advent of the Internet has meant trademark law will evolve even more. There’s just too much complexity for us to expect the law to remain static. Case in point was less than 10 years ago when domain names were first being created. Some entrepreneurial types, for $20, reserved domain names they knew companies would want. In time these individuals offered the unsuspecting companies their own names back for up to a million dollars in some instances.
In response to this legal extortion, Congress passed an anti-cybersquatting law, which established penalties for those who sit on domain names with no legitimate need, and take the next step of approaching a company to sell that domain name. It’s a good thing for this law. I understand there’s no word in the English dictionary that isn’t a domain name now!
This being the real world, infringement happens. And this being the global age, your next piracy problem could come from about anyone willing and able to profit from your good name. Remember, only you can initiate a trademark infringement action. It’s up to you, not the government, to police your intellectual property rights.
Fortunately there are several ways to contest others’ use of your trademark. One place to start is by reviewing the online guide to the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office at www.uspto.gov/web/offices/dcom/ttab/
But if infringement is causing you some real damage, you may have to consider contacting an attorney. Sometimes a bluntly worded letter from a lawyer can do wonders.
When protecting your intellectual property, time is of the essence. If you think your mark is being infringed, get all the protection you deserve under the law. That’s why it’s there.
For a free initial consultation, contact a business attorney at Denver based Block45Legal today by calling us at (303) 353-4531 or submitting a form here.