In last week’s post, I explained some of the basics of what a trademark is, and how it protects both businesses and consumers. Once a valid trademark has been established, the holder of that mark can enforce its rights against other businesses or individuals who infringe upon them. Remember that the purpose of a trademark is to identify and distinguish the source of particular goods or services. Trademark rights are infringed when a third party uses the mark in a way that alters the public’s association between a product or service and its source. Two of the most common forms of trademark infringement are direct infringement and trademark dilution. This post will address direct infringement, and an elsewhere I address trademark dilution.
Direct infringement occurs when someone uses another person’s trademark in a manner that is likely to cause confusion as to the source of a particular good or service. Going back to the McDonald’s example from last week’s post, if someone opens a restaurant called “McDonald’s,” or uses the “golden arches” logo, without permission from the McDonald’s Corporation, that person is committing direct infringement. The new restaurant’s unlicensed use of the McDonald’s trademarks is likely to confuse customers into thinking that its products are related to those of the actual McDonald’s Corporation.
The name or logo that our McDonald’s impersonator chooses need not be identical to those of the actual McDonald’s in order for him to directly infringe upon the company’s trademark rights. Even if he selects a name or logo that is not identical to those of the trademark holder, he can still be liable for trademark infringement if his marks are “confusingly similar” (for example, naming his restaurant “MacDonald’s,” or using green arches rather than gold). Again, the concern with direct infringement is whether the second use of the mark creates a “likelihood of confusion” as to the source of the goods or services offered.
Whether confusion is likely is often not easy to determine. Courts generally consider several factors: the strength of the mark, the proximity of the goods or services of the holder of the mark and alleged infringer, how similar the marks are, evidence of any actual confusion, the marketing channels used, the degree of care consumers are likely to use when seeking out particular goods or services, the alleged infringer’s intent when he selected the mark, and the likelihood of expansion of the product lines. Weighing these factors, the more likely it is that the use of a mark would cause confusion, the more likely a court is to find direct infringement.
When thinking of trademarks, it is important to remember their primary purpose: source identification. A strong trademark will allow consumers to easily associate a good or service with its source company, and an act by a third party that causes the public to confuse that source would be direct trademark infringement.