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A trademark is generally defined as a word, phrase, symbol, slogan, color, packaging, or any other “mark” that identifies specific goods or services. Trademark infringement occurs when someone uses a trademark or service mark in a way that could lead to confusion with the original mark.

Unauthorized use of any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, would count as trademark infringement if:

• it is likely to cause confusion, or to cause mistakes, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person; or
• in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities.

For such use to be considered infringing, the following must be true:

• The mark must be valid and eligible for legal protection.
• The person who claims infringement must own the mark.
• The unauthorized use of the mark must be commercial, i.e., it must be connected with the sale or advertising of goods or services.

Confusion

The key phrase above is “likely to cause confusion.” Trademark law is designed to protect companies’ intellectual property as well as consumers, i.e., prevent someone from becoming confused and thinking that a product or service is provided by a particular company when actually it is not.

However, deciding when this likelihood of confusion exists is not always easy. Through the years, the courts have established several factors to consider when evaluating the likelihood of confusion. Although the factors may vary by jurisdiction, they generally include the following elements:

• The strength of the trademark allegedly infringed.
• The similarity between the plaintiff’s trademark and the mark used by the defendant.
• The similarity of the good or services.
• Evidence of actual confusion.
• The degree of care likely to be exercised by consumers.
• The marketing channels used.
• The defendant’s intent in selecting the mark.

Intent

The intent is another important factor to consider.

A good example to illustrate the importance of intent is a cybersquatting case between GoDaddy and the Academy of Motion Picture Arts and Sciences that started in 2010 and lasted more than five years. The Academy filed a lawsuit against GoDaddy for allowing customers to purchase domain names like 2011oscars.com or betacademyawards.com, “park” them, and collect a portion of the revenues from GoDaddy’s advertising partners on a pay-per-click basis. At an earlier stage in the case, the Academy managed to prove that all but 57 of 293 domains at issue were confusingly similar to their trademarks. GoDaddy was down to its last defense at the trial – no bad faith intent to profit, and U.S. District Court Judge Andre Birotte Jr. ruled in their favor.

Dilution

Dilution occurs when the public associates a popular mark with more than one good or service without those goods and services being closely related to each other. There are two types of dilution:

• Blurring – when the use of a mark by somebody other than the owner makes the mark less unique.
• Tarnishment – when the use of a famous mark could ruin the good reputation of the mark’s owner.

If your use of a mark is non-commercial or if you are using the mark in a fair use manner, then you cannot be accused of dilution.

Keeping your trademark secure

There is a tendency for the law to favor registered trademarks in infringement cases. Trademark protection can be obtained through registration by filing an application for registration with your national/regional trademark office and paying the required fees. At the international level, you have two options: either you can file a trademark application with the trademark office of each country in which you are seeking protection, or you can use WIPO’s Madrid System.

If you become aware that somebody else is using your trademark without permission, it is highly recommended to act quickly. Delaying may hurt your ability to enforce trademark protection, especially in case you are using a non-registered trademark.

You must send a cease and desist letter to begin the process of defending your trademark. If the recipient doesn’t comply, then your next step should be to consult an attorney about filing a lawsuit.

The importance of trademark infringement

Trademark infringement must be taken very seriously. Experts say that the average cost of a trademark lawsuit can be in the range of $120K – $750K, and it may take years for a court of law to reach a definitive verdict. Understanding how trademark protection works and how significant an infringement can be will save you a serious amount of both time and money.