25. How does a trademark holder demonstrate infringement of its trademark?
Proving trademark infringement requires a showing that the plaintiff has valid trademark rights and that someone is using another mark that is confusingly similar to the public. That is, the business claiming infringement must show that the other business’s use of the mark causes a high “likelihood of confusion” for the general public regard to the business, product, or service represented by the mark. In determining whether a mark is confusingly similar, the court will review several aspects of the protected and infringing mark. Some of the primary considerations are as follows:
• Mark – How similar in appearance or language are the marks? The court may also look to how the mark sounds when spoken aloud.
• Business – How similar are the goods or services represented by the mark? What are the differences? Is the mark used on several types of product or service?
• Market or Industry – Are the businesses competitors? Same target markets? Same geography? Same stores? Same type of customer? What is the competitive differences (any differentiation or cost differences)? How are they advertised (similar marketing practices)? What is the economic significance of the mark to each party?
• Notoriety – How well known is each mark? How long has each mark been in use? What do customer surveys say about mark and brand association?
• Intent or Purpose – Was the alleged infringer aware of the mark before employing her mark? This goes to determining whether the infringement is intentional or inadvertent.
• Public – What is the extent of potential confusion to the customer? Will a customer mistake the company or brand behind a product as a result of the mark? Will the customer believe that the placement of the conflicting mark is an endorsement by the owner of the valid trademark?
• Discussion: What do you think about the factors a court would employ in determining whether trademark infringement exists? Do any of these factors seem particularly important in a determination? Can you think of any other factors the court should consider?
• Practice Question: Mark is the owner of Bait Shop Restaurant. For several months, he has been in a trademark rights battle with another business using the name Bait Shop Restaurant. Mark’s business was the first restaurant to use this name. Mark is considering bringing a legal action against the alleged infringer. What will Mark have to demonstrate to the court in order to prevail over the alleged infringer?