The elements for a successful trademark infringement claim have been well established under both federal and state case law. In a nutshell, a plaintiff in a trademark case has the burden of proving that the defendant's use of a mark has created a likelihood-of-confusion about the origin of the defendant's goods or services. To do this, the plaintiff should first show that it has developed a protectable trademark right in a trademark. The plaintiff then must show that the defendant is using a confusingly similar mark in such a way that it creates a likelihood of confusion, mistake and/or deception with the consuming public. The confusion created can be that the defendant's products are the same as that of the plaintiff, or that the defendant is somehow associated, affiliated, connected, approved, authorized or sponsored by plaintiff.
Eight factors for likelihood of confusion
To analyze whether a particular situation has developed the requisite "likelihood of confusion," courts have generally looked at the following eight factors:
- the similarity in the overall impression created by the two marks (including the marks' look, phonetic similarities, and underlying meanings);
- the similarities of the goods and services involved (including an examination of the marketing channels for the goods);
- the strength of the plaintiff's mark;
- any evidence of actual confusion by consumers;
- the intent of the defendant in adopting its mark;
- the physical proximity of the goods in the retail marketplace;
- the degree of care likely to be exercised by the consumer; and
- the likelihood of expansion of the product lines.
The first five of these factors are examined in every trademark infringement action. The last three factors are the most common additional factors that are considered by a court.
Of these eight factors, the first two are arguable the most important. The similarity of the marks is clearly an important part in establishing likelihood of confusion, but it is far from determinative. It is possible for the same, identical mark to be used in the same geographic area without any trademark infringement occurring, as long as the goods or services of the parties are sufficiently dissimilar. As an example, a quick review of the Minneapolis phone book lists numerous companies operating under the name SPEEDY. The services offered by these companies are as follows:
- Car washing services;
- Locksmith services;
- Grocery retail services;
- Printing services;
- Plumbing services;
- Sign creation services; and
- Video rental services.
In one way, these companies are a good example that the same mark can exist on multiple goods and services as long as the goods and services are sufficiently difference. However, this may be a poor example since the SPEEDY mark may be too descriptive to function as a trademark without proof of secondary meaning (see BitLaw's discussion of the strength of marks for further information).
Remedies available for trademark infringement
The most common form of relief granted to a successful plaintiff in a trademark infringement lawsuit is an injunction against further infringement. If the infringed mark was federally registered, attorneys fees would also be available to a successful plaintiff. Monetary damages are also available under the Lanham Act, but in practice are rarely awarded in trademark lawsuits.