4.9 Trademark Infringement

Trademark infringement is a complex legal issue that hinges on consumer confusion. Courts use various factors to determine if infringement has occurred, with the similarity of marks and likelihood of confusion being key considerations.

Different types of infringement exist, including direct, contributory, and vicarious. Famous trademarks receive additional protection against dilution, which can occur through blurring or tarnishment. Understanding these concepts is crucial for navigating trademark law.

Trademark Infringement

Factors in trademark infringement

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• Likelihood of confusion test determines whether consumers are likely to be confused about the source or sponsorship of goods or services
• Courts consider various factors:
  • Similarity of the marks compares appearance, sound, and meaning of the marks
    • Greater similarity increases the likelihood of confusion
  • Strength of the plaintiff's mark means distinctive marks receive stronger protection than descriptive or generic marks
  • Proximity of the goods or services suggests confusion is more likely when the parties' goods or services are related or compete in the same market
  • Evidence of actual confusion such as instances of consumer confusion (misdirected inquiries or purchases) support infringement claims
  • Defendant's intent indicates bad faith or intentional copying of the plaintiff's mark suggests a higher likelihood of confusion
  • Sophistication of the relevant consumers means confusion is less likely when consumers are sophisticated and exercise care in their purchasing decisions
• Similarity of the marks is a key factor as courts assess the overall impression created by the marks, not just individual features
  • Identical or nearly identical marks strongly indicate a likelihood of confusion
• Consumer confusion is the central inquiry and infringement occurs when there is a probability of confusion, not just a mere possibility
  • Confusion can arise at various stages (initial interest confusion, point-of-sale confusion, or post-sale confusion)

Types of trademark infringement

• Direct infringement occurs when a party uses a mark in a way that is likely to cause consumer confusion and requires the defendant to actively use the infringing mark in commerce
• Contributory infringement arises when a party intentionally induces or encourages another to engage in direct infringement
  • Requires knowledge of the infringing activity and a material contribution to it
  • Examples include supplying products or services that facilitate infringement
• Vicarious infringement occurs when a party has the right and ability to control the infringing activity and directly benefits from it
  • Does not require knowledge of the infringement
  • Often applies in situations involving agency relationships or partnerships
• Key differences:
  • Contributory and vicarious infringement extend liability beyond direct infringers
  • Contributory infringement requires knowledge and material contribution, while vicarious infringement focuses on control and direct benefit
  • These doctrines help to address situations where parties indirectly facilitate or profit from trademark infringement

Protection for famous trademarks

• Trademark dilution protects famous marks from uses that weaken their distinctiveness or tarnish their reputation even in the absence of consumer confusion or competition between the parties
• Types of dilution:
  • Dilution by blurring occurs when a mark's distinctiveness is impaired by the association with another similar mark and weakens the strong identification between the famous mark and its source
    • Example: A company using "Kodak" for unrelated products (bicycles)
  • Dilution by tarnishment arises when a mark's reputation is harmed by an association with inferior or offensive products or services and damages the positive image and goodwill associated with the famous mark
    • Example: A company using "Tiffany" for adult entertainment services
• Requirements for dilution protection:
  1. The mark must be famous and widely recognized by the general consuming public
  2. The defendant's use must have begun after the mark became famous
  3. The defendant's use must be commercial and in commerce
• Additional protection for famous marks:
  • Dilution law provides a separate cause of action from traditional trademark infringement
  • Famous marks can be protected against uses that blur or tarnish their distinctiveness, even without consumer confusion
  • This broader scope of protection helps preserve the value and integrity of famous marks

Additional Trademark Concepts

• Priority of use establishes who has the right to use a trademark in a particular geographic area
• Secondary meaning occurs when a descriptive mark acquires distinctiveness through use and consumer association
• Trade dress refers to the overall visual appearance of a product or its packaging that indicates its source
• Trademark registration provides additional legal benefits and nationwide constructive notice of ownership
• Fair use allows limited use of another's trademark for descriptive or comparative purposes without permission