Rights of a Trademark Owner and Defenses
In order to obtain rights in a trademark the mark must be used in commerce. Registration does not protect a trademark unless the owner uses the mark. The advantage of registration gives the owner the benefit of nationwide constructive use. Trademark rights depend on priority of use in connection with a particular product or service. In theUnited Statesthe owner can only obtain a trademark simply by using it. This is different from the rest of the world. Congress made a vehicle to get around this called “intent to use.” With a bona fide intent to use in commerce you will get the benefit of a earlier constructive use date. This does not create a registered mark but instead protects your interests in the mark. The person who first uses a mark for particular product in a particular geographic market is called the senior user. Another user who begins using that mark in the same market later after the senior user is called the junior user. The first to use the mark in commerce is the one who gets ownership over mark, thus making priority the utmost importance.
Trademark infringement occurs when a consumer is confused. Direct confusion cases occur when consumers mistakenly believe that the source of the trademark is one owner when in fact the source of the goods is actually being supplied by the infringer. This likelihood of confusion and infringement occurs in three different ways. The first way is quite common and called point-of-sale infringement. This occurs when consumer encounters infringing goods/services in the marketplace and they are not sure exactly what they are getting. This is the classic form of trademark infringement where another person puts the trademark owner’s mark on their goods to make consumer believe the trademark owner was the one who supplied it. The second way is called post-sale confusion which arises when the buyer was not confused at the point of sale, but other consumers looking at the product after the sale are likely to be confused about the source of the product. The purchaser knew it wasn’t a real product but he might gift or sell it later, which leads to confusion. The third way is initial interest confusion/pre-sale confusion which occurs when one person uses a mark similar to an owner’s mark to create initial consumer interest in its own product, even if that confusion is dispelled before any sale occurs.
Trademark law and consumer confusion is controlled by the Lanham Act which states, “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it (d) Consists of or comprises a mark which so resembles a mark registered in the Patent Office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely when applied to the goods of the applicant to cause confusion, or to cause mistake or to deceive.”
The likelihood of confusion test under §1052(d) looks at whether or not the purchasing customer would be mistakenly by the source of a particular good. The courts look at the factors from In re E.I. DuPont de Nemours & Co., 476 F.2d 1357 for guidance on a case by case basis, the DuPont factors are:
1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
2. The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use.
3. The similarity or dissimilarity of established, likely-to-continue trade channels.
4. The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.
5. The fame of the prior mark.
6. The number and nature of similar marks in use on similar goods.
7. The nature and extent of any actual confusion.
8. The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.
9. The variety of goods on which a mark is or is not used.
10. The market interface between the applicant and the owner of a prior mark.
11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
12. The extent of potential confusion.
13. Any other established fact probative of the effect of use.
Another way that trademarks are infringed upon is called dilution. The underlying idea of dilution is if many people are allowed use a famous mark, the mark loses its meaning/importance. Dilution occurs in two ways. The first is dilution by blurring, which diminution of the uniqueness and individuality of the mark caused by another’s use of the same or similar mark. The second way dilution occurs is dilution by tarnishment, which is the unfavorable association between the infringer’s inferior quality construction and the owner’s good name.
The first major trademark defense occurs when you register your mark. When you register your trademark it is presumed to be valid, but it can still be litigated. However, the burden switches from the trademark owner to the infringer to prove that the owner’s mark is descriptive and the mark is not valid. Once your mark has been registered for 5 years it obtains incontestable status. This confers a conclusive presumption of validity and exclusive right to use a mark in connection with specified good or service. This means it cannot be challenged as being merely descriptive. The second major trademark defense is called fair use. The fair use defense occurs in one of two ways. The first called nominative fair use, which is easy to see. It occurs when someone uses another’s mark to identify or refer to other’s good (i.e. when used in comparative advertising). The second fair use defense is called descriptive fair use. Descriptive fair use defense says that just because you have a trademark of words, the words still exist and can be used (i.e. they aren’t removed from the dictionary).