Can I use a word the same or similar to a famous mark in my advertising copy?
What about an apparently abandoned mark? Is that available?
Will I get sued if…?
Can I get a trademark for…?
I see questions like these often in my practice, at parties and on social media.
Hi, I’m Chris Paradies, a registered patent attorney and Florida Bar certified intellectual property attorney, and I’m going to answer all of the confusion surrounding trademark registration and lawsuits.
I’m not going to get into “fair use”, much, which is a defense to trademark infringement. While I would like to include this, it would just make this training too long. And in most cases, you just don’t want to be relying on a fair use defense.
So, let’s look at trademarks.
There are some common misunderstandings that make it hard to talk about trademarks. But most of these will be addressed as we discuss this topic. Just agree to keep an open mind, and forget what you think you already know about trademark disputes.
First, always remember, the point of owning a trademark or service mark is to identify your company as the source of particular goods or services. If you start here, and remember this, it makes everything else easier.
You’d like to have as distinctive a mark as possible. So, you’re not likely to be delving deep into the unanswerable questions. Instead, you’re looking for a distinctive mark that your customers will readily identify with your brand and ONLY your brand.
The point of distinctiveness is not to see how close you can come to someone else’s mark. You’re not looking for how close you can come to being likely to confuse consumers…
With this in mind, the very difficult likelihood of confusion scenarios become: “Is there any possibility of confusion?” That question is usually much easier to answer.
What do I mean by “likelihood of confusion”?
That’s the analysis used in court to determine if an owner of a mark can stop a third party from using or registering the same mark or a similar mark. The factors used in this analysis are sometimes referred to as Dupont factors, because lawyers like to refer to the name of a litigant from an appellate case that is cited by other lawyers in the courts.
- Are you using the “word” as a mark, to identify your goods and services, or are you using the word descriptively?
- If you’re using the word as a mark, are you using it to identify you or your company as the source of any similar goods or services?
- Are you serving the same customers?
- Are you using the same channels of commerce?
- How many other companies are using the “word” or something similar as a mark and in what types of goods or services?
- Is the “word” used in combination with design elements in the logo, as part of the logo?
- Who used the “word” first as a trademark or service mark?
Once you answer all of these questions, then you should consult with a trademark or “intellectual property” attorney in your state or country.
If your company is a corporation or limited liability company, you won’t be able to sue without an attorney.
If the “word” is registered as part of a design as a logo by a third party, and you are using it in commerce as a mark to identify your company as the source of goods or services, after the filing date of the application for registration, then be thankful that you have not already been sued.
If you’re using it to identify the brand of goods or services that you are reselling, then you have to look at “fair use” to determine if your use of the third party’s mark is a permitted use.
And remember that there is little upside for you to bring a lawsuit against a third party to continue using any particular word, descriptively, if there are lots of other words that you can use to describe your goods or services.
With all that said, if you want to sue in the U.S., you have the right. I would advise against bringing a lawsuit against a trademark owner unless you have at least a few hundred thousand dollars you would like to blow. But I am sure there are attorneys out there that could use your money better than you.
So what are the “Dupont factors”?
It all comes down to whether your trademarks and trade dress are distinctive or are likely to cause confusion among likely consumers of your product or service. The more distinctive your mark is from other marks, the less likely that any of the factors considered in the case referred to as Dupont will be relevant to your situation.
- Relatedness. How related are the goods that are being sold? The more related; the more likely that confusion ensues.
- Similarity. How similar are the marks? The more similar; the more likely confusion ensues. It could be any type of similarity, whether in appearance or in sound (as spoken) or in meaning or in commercial impression or in any other way.
- Channels. Are the channels of commerce that are likely to continue similar? A channel of commerce is how your product or service is discovered and distributed. Some examples are retail, direct sales, distributors…, if the channels are the same; the more likely that confusion ensues.
- Conditions. Under what conditions do consumers make a decision to purchase your product? The more likely the purchase is an impulse purchase; the more likely that confusion ensues.
- Fame. How famous is the prior mark? The more famous the mark; the more likely that confusion ensues.
- Number. How many other brands are using similar marks on related goods? The fewer brands using similar marks on similar goods; the more likely that confusion ensues.
- Actual. Is there actual confusion. The more actual confusion among actual relevant consumers; the more likely confusion ensues.
- Concurrent. Have the marks been used concurrently for an extended time without actual confusion? The shorter the period that similar marks have been used on similar goods without actual confusion; the more likely actual confusion.
- Variety. How many goods is the senior brand (i.e. the earlier brand use of the mark) being used on? The more goods; the more likely that confusion ensues.
- Consent. Has the senior brand consented to the particular use made by the junior mark? A consent agreement may be entered into by two parties that provides for concurrent use of similar marks. This may be relevant to a confusion analysis, especially if the agreement sets out limitations on the uses made of the mark by the parties. Alternatively, consent may be given without any agreement, if the senior party new or should have known of the junior party’s use. Legally, this implied consent is called laches or estoppel, depending on the facts. The less deliberate and obvious the attempts to avoid confusion; the more likely confusion ensues, regardless of consent.
- Exclude. The right to exclude others from using its mark is considered. A federal registration gives a user the right to exclude others, but a “common law” use of mark, without registration, doesn’t give rise to the right to exclude, necessarily. The stronger the right to exclude; the more likely confusion ensues.
- Extent. What is the extent of any possible confusion? The greater the extent of possible confusion; the more likely confusion ensues.
These factors are not exclusive. Anything else that is relevant to the use and giving rise to confusion should be considered