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Wednesday, October 29, 2014
by Chris Coulles
Wednesday, September 3, 2014
by Worley Law, LLC

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Trademark Infringement

When a business person discovers that an unrelated party is using her trademark, she can stop such use if she is the first user of the mark and the other party's use of the mark is likely to cause confusion among customers. If a letter requesting that the unauthorized party stop use of the mark is ignored, the trademark owner can file a court action. Trademark rights arise by use and are enforceable under common law, but federal registration provides a presumption of validity and the ability to sue in federal court.

In an infringement action, Ohio courts weigh the factors discussed below. Not all of the factors are equal or used in every case. The ultimate question is whether relevant consumers are likely to believe that the products/services offered by the parties are somehow affiliated.

(1) Strength Of Plaintiff's Mark.

An examination of the strength of a plaintiff's mark focuses on the distinctiveness of a mark and its recognition among the public. Unless a mark has gained sufficient recognition among consumers, a mark that describes some aspect of the goods or services will probably not cause confusion. Marks that are afforded high protection are generally unique or intensely advertised and enforced.

(2) Similarity of the Marks

If consumers cannot see a difference in the marks, the likelihood of confusion is high. Marks are compared in their entirety, including appearance, sound, connotation and commercial impression. Disclaimed words (those that describe the goods/services) are only considered as part of the mark as a whole.

(3) Relatedness Of The Goods/Services

The relatedness of the goods/services focuses on whether customers will mistakenly believe that they came from the same source or are somehow connected with or sponsored by the plaintiff's company. The likelihood of confusion is higher when the goods/services are the same or closely related.

(4) The Marketing Channels Used by the Parties

If customers learn about the goods/services through the same marketing channels used by each party (such as social media) or if the goods/services are distributed through the same marketing channels (such as the Internet) the possibility of confusion is higher.

(5) Purchaser Care and Sophistication

The degree of care used by consumers in purchasing the goods/services affects the likelihood of confusion. Sophisticated buyers (usually when the goods/services are expensive or unusual) increase the potential for a likelihood of confusion.

(6) Defendant's Intent in Selecting its Mark

Evidence that the defendant intentionally copied the plaintiff's mark can constitute strong evidence of a likelihood of consumer confusion.

(7) Expansion

Under the expansion factor, if either party could expand her business to directly compete with the other, or market to the same consumers, there is an increase in the likelihood of confusion.

(8) Evidence Of Actual Confusion

If a plaintiff has had actual confusion, the likelihood of confusion is strong.

If there is no likelihood that consumers will be confused, even when the marks in question are similar, no infringement is found. An alleged infringer may assert defenses, such as fair use or delay. The remedies for infringement of a federal trademark include injunctive relief, damages, attorney's fees in exceptional cases, and costs.