By Toni Guarino, Laura Levin, & Melissa Morales
What is protected under Trademark Law, and how long does it last?
Trademark prevents others from copying or imitating your source-identifying mark. It’s purpose is to prevent consumer’s from being confused when purchasing items. Trademark law protects names, titles, characters, short phrases, designs, combinations of letters or numbers, logos, symbols, and anything that identifies the source of a product or service. Trademark protection lasts indefinitely, as long as the mark is continuously used. Once a trademark is registered, it must be renewed periodically to remain in force.
Why You Should Register Your Trademark
Your mark does not need to be federally registered to be protected, however, registering a mark has more benefits than relying on state or common law protection . Once a mark is registered it provides nationwide notice of use of the mark and entitles the holder to affix the registration symbol to the item. After continuous use for five years, the holder can petition the PTO to declare the mark incontestable. Incontestable status prevents a third party from attacking the mark based on descriptiveness. It also precludes third parties from challenging the mark based on ownership or registration. For the purposes of this guide, we assume that your trademark is federally registered.
Do you have a potential Claim?
The standard for evaluating a potential trademark infringement is whether or not the targeted consumer is likely to be confused by a similar or nearly identical mark. What does this mean? It means that if a consumer purchased a product believing that it came from a particular source, when it did not; likelihood of confusion is the result. This is a factually intensive inquiry and is decided on a case-by-case basis. Different courts consider different factors when determining whether “likelihood of confusion” exists. Following are some of the more common ones:
- 1. The strength of your mark. The more distinctive your trademark, the stronger it is. The more descriptive it is, the weaker it is. If your trademark is more descriptive than distinctive, the courts will analyze whether or not the mark has acquired secondary meaning.
- 2. Proximity of the goods. The goods do not have to be identical, but courts will analyze whether or not they appeal to the same group or serve the same function.
- 3. Similarity of the mark. Courts consider sight, sound and meaning. Do the marks look similar, sound similar? Are they synonyms?
- 4. Evidence of actual confusion. Courts generally look to survey evidence to determine whether or not actual confusion has occurred in the marketplace.
- 5. Marketing channels. Courts consider how the goods get to the consuming public. Are they sold through the same magazines, newspapers, etc?
- 6. Type of goods and purchaser care. Courts have generally determined that the more expensive an item, the more care the consumer will put into the purchasing decision. Courts typically assume that inexpensive, frequently used items may be purchased with less consideration than expensive items. Someone buying a $2,000 handbag would most likely be more discerning than someone buying a pack of gum.
- 7. Intent. Courts will attempt to determine if the infringer used the mark in good faith or knowingly used the mark to divert trade by deceiving consumers?
- 8. Likelihood of expansion. Courts consider the geographic range of the mark, the history of the company, the business model and the possibility of expansion.
Think about these factors. If you think these factors work in your favor, you may have an infringement claim. However, it’s important to remember that the USPTO (US Patent and Trade Office), the issuer of the trademark, uses the “likelihood of confusion” factors only to evaluate trademark applications, not to investigate infringement claims.
Consulting an attorney. Now that you’ve considered the factors for the “likelihood of confusion” test, do you still believe you have a claim for infringement? Before hitting the Yellow Pages to search for an attorney, you should also contemplate:
Your opponent’s defenses. Does the infringer have an affirmative defense? For our purposes, the most likely potential defense would be Nominative Use. Nominative use is a situation where someone is using your trademark to describe you or your goods, not their own.
Attorney fees. Think about the costs of pursuing an infringement claim, and what your long-term goals are. Is the infringement a viable threat such that it may take away profit from your business? Is the fight worth the attorney fees and the potential costs of litigation? Is it damaging your brand’s reputation? As a trademark owner, no one knows the “right” answers to these questions better than you do.
Potential awards. Although the costs may seem high, there are certainly benefits to seeking help from an attorney. For example, plaintiffs may be entitled to injunctions against further infringement, and/or monetary relief for damages, costs of action or from the infringer’s profits from the use of your trademark.
Monitor your mark
Now that you know some of the basics as to how to evaluate a potential infringement, here are a couple of quick tips to help you monitor your mark and find these potential infringements as they arise.
- 1. Police your mark. If you have the resources to use professional search firms to monitor your trademark usage, use them! A well-known service called SAEGIS by Thomson & Thomson is a good resource because it alerts you when someone is attempting to register a trademark that is “confusingly similar” to your own. Note that when using SAEGIS, if it delivers results from the “Official Gazette,” then this means someone has filed a trademark application for Federal Registration of the mark. If you do not have the resources to use a professional search firm, you can conduct manual searches using TESS (Trademark Electronic Search System).
- 2. Look out for counterfeiters. Keeping an eye out for counterfeits is just as important as monitoring pending trademark applications for confusingly similar marks. A counterfeit is something that features your trademark on a product that you did not produce, in order to lead people to believe that it is your product. Do regular searches for your trademark on auction sites such as eBay, and set up Google Alerts. Google Alerts will send notifications anytime your trademark is published online. Do some research on what counterfeit sites are out there by searching for imitations of other similar brands, and stay on top of these sites!
The tips in this resource guide are intended as a rough guideline. We hope that it will be helpful for you in evaluating potential infringements.
15 U.S.C. Section 1114
AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979)