Is My Trademark Being Infringed?Designed to protect ownership of words, names, logos, shapes, sounds and even odors, trademarks are a truly great legal invention. Once registered with the federal government, trademarks under U.S. law can theoretically provide protection forever - as long as the owner continues to use the mark in trade and pays the renewal fee every 10 years.
Used throughout history from Greek and Roman times, marks for many centuries have proven authenticity, ownership and quality on products ranging from pottery, to jewelry, to even quarried stone. Thus the idea of distinctively marking products to distinguish them from competition makes the trademark the oldest and most pervasive form of intellectual property.
Codified into law by the U.S. in 1870 - relatively late compared with European countries - trademarks have seen an explosive growth. According to the Brand Names Education Foundation (BNEF), the average supermarket today carries 90,000 separate branded items, up from 15,000 only 25 years ago.
Ironically, more safeguarding hasnt necessarily provided more protection. As we all know, imitations, counterfeits and knock-offs are too common. Watches, blue jeans, computers, movies, music - virtually no successful product is immune. Product counterfeiting worldwide is a $60 billion industry, costing legitimate manufacturers 130,000 jobs a year.
Primary Tests of Trademark Infringement
Suppose youve adopted a trademark for a product or invention. Youve expended tremendous resources getting your brand established. Suddenly you discover someone else is marketing a product with a trademark very similar to yours, or is marketing a product different from yours but with the same or very similar mark.
Is your trademark being infringed? How would you know? While the tests for proving (or disproving) trademark infringement can be extremely complicated, following are the two main areas on which you should focus. Remember, Im just scratching the surface of trademark law. For more information regarding your particular situation, do more research online or at your library.
1) Likelihood of Confusion
You cant make, sell or name a product or product attribute thats likely to be confused with someone elses product or product attribute, and vice versa. Unfortunately, while this potential infringement issue is easy to understand, it can sometimes be difficult to prove.
Suppose youre getting some competition with your product or brand name. As long as theres no likelihood of confusion between the marks, then its business as usual for you both. However, if your competitions widget and/or brand name is similar to yours - knowingly or unknowingly - then there may be infringement.
Examples are several incidents of individuals trying to bank on the established name of Microsoft, Inc., by using confusingly similar tactics. Several years ago, a small company came up with the name Microsof. While the two companys names were different for sure, a one-letter difference, or substituting letters like ph with f , or using a mark that sounds like someone elses, usually crosses the infringement line. So the new company had to abandon its clever name - which was actually created to drive poor spellers to their website to drive up advertising revenue. More recently is a murkier infringement matter in which a software developer actually named Mike Rowe created the website mikerowesoft.com. While Microsoft has aggressively pursued the matter to build an infringement case, their side is weakened because the case involves someones uniquely given name. It remains to be seen which side will prevail.
2) Channels of Commerce or Trade
This is where you have identical names being used in totally different lines of business. Its why you can have Domino® brand sugar, Domino® brand pizza, and Domino® brand software and no infringement is occurring between or among them.
Its also why we see Cadillac® brand pet food and Cadillac® brand automobiles, and theres no confusion or infringement with these as well. Why not? Because the courts look at how close one mark is to another within their channels of commerce. Even if the mark is spelled the same and pronounced the same, as long as its in a different channel of commerce theres usually no likelihood of confusion in peoples minds. People simply know a company that makes automobiles would not be catering to canines.
However, like all forms of intellectual property, trademark law is a moving target. Somewhat contrary to what I just said about same marks being usable in different channels of commerce is the case of the two WWFs. As recently as 1994, the acronym was used under mutual agreement by both the World Wrestling Federation and the World Wide Fund for Nature, which had adopted it first. Then came the Internet. Suddenly WWF became significant to web surfers, and the wildlife charity felt the wrestling entitys wwf.com was likely to be confused with wwf.org. Taking the wrestling organization to court, the charity prevailed.
How Close Can I Go Before Im Infringing?
You definitely want to stop people from infringing on your brands territory. Conversely there are cases in which you may want - or need - to come as close as possible to anothers trademark while staying out of infringement hot water.
One reason could be you established your product on a small, local scale with little or no trademark protection. So before you spend big money getting it into the big leagues, you need to know if your use of your mark would infringe someone elses mark. In this case, apply the same tests I mentioned earlier - avoid a likelihood of confusion and/or determine whether youre in the same channels of commerce.
Some Finer Points
Another reason to see how close you can legally come to someone elses mark could be simply that your naming is so clever, obvious or desirable you really want to pursue it. This very thing happened at a new business I know that created a company name was very similar to the product name of another company operating in a different business. Several years later, the new company received word from the older company threatening court action if the newcomers didnt pay a royalty or shut down its website. Unfortunately for the older company, they neglected to notice the new company had established a trade name - which is a total departure from trademarks. Not to mention, the companies were doing business in separate channels of commerce.
Remember, trademarks identify goods or services. A trade name isnt a product name. You are allowed to have a corporate name - even a domain name - thats similar or identical to someone elses product name as long as youre not using it in a trademark sense.
Another wrinkle in your favor is where letters or names are parts of other names by coincidence. As some of you know Im a member of Mensa, the high-IQ society. I have this quirky friend who, while smart enough to join, never did, but liked to show off. One day I parked my car which has a Mensa license plate holder. Unknown to me he added letters to make the plate say Carmensandiego, which includes the word mensa in the middle. I bring this up because had this been a trademark issue, such usage is not forbidden. Companies cannot claim wholesale ownership of letters that coincidently might be parts of other names.
New Ground Online
Certainly the advent of the Internet has meant trademark law will evolve even more. Theres just too much complexity for us to expect the law to remain static. Case in point was less than 10 years ago when domain names were first being created. Some entrepreneurial types, for $20, reserved domain names they knew companies would want. In time these individuals offered the unsuspecting companies their own names back for up to a million dollars in some instances.
In response to this legal extortion, Congress passed an anti-cybersquatting law, which established penalties for those who sit on domain names with no legitimate need, and take the next step of approaching a company to sell that domain name. Its a good thing for this law. I understand theres no word in the English dictionary that isnt a domain name now!
This being the real world, infringement happens. And this being the global age, your next piracy problem could come from about anyone willing and able to profit from your good name. Remember, only you can initiate a trademark infringement action. Its up to you, not the government, to police your intellectual property rights.
Fortunately there are several ways to contest others use of your trademark. One place to start is by reviewing the online guide to the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office at www.uspto.gov/web/offices/dcom/ttab/
But if infringement is causing you some real damage, you may have to consider contacting an attorney. Sometimes a bluntly worded letter from a lawyer can do wonders.
When protecting your intellectual property, time is of the essence. If you think your mark is being infringed, get all the protection you deserve under the law. Thats why its there.