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What Is Trademark Infringement and How Is Infringement Determined?

Trademark infringement is defined as the unauthorized use of a trademark about goods or services in a manner that is likely to cause confusion, deception or mistakes about the source of the goods or services. For a trademark owner to claim infringement, the Lanham Act specifies that three factors must be shown: use of a protected trademark, priority to use the trademark and a likelihood of confusion between the trademark and the alleged infringer.

The first factor is the easiest to determine. Simply put, someone must use the registered trademark for there to be trademark infringement. If the trademark hasn’t been used by anyone, then it hasn’t been infringed on.

The second factor is also generally easy to establish. It is typically assumed that the owner of a federal trademark registration has a priority to use and publish the trademark that is senior to the person allegedly infringing on the trademark. This seniority can be challenged so long as the defendant can prove that they have priority to use the trademark due to transfer or contractual obligations. If it is concluded that the defendant has the priority to use the trademark, then the plaintiff can no longer sue for infringement.

How Likelihood of Confusion Is Established During a Trademark Infringement Case

Likelihood of confusion is generally the central focus of any trademark infringement case. The Lanham Act stipulates that the question here is “whether there is a likelihood of confusion on the part of the consumers between the names and symbols used by the two parties”. The term “likelihood” refers to a probability that confusion will occur, not merely a possibility. Courts use an eight factor test in order to decide if there will be a likelihood of confusion.

The first factor is the strength of the plaintiff’s mark. This factor looks at the distinctiveness of the mark to ascertain whether it identifies the goods sold under the mark as stemming from a particular source. 

The second factor is the degree of similarity between the plaintiff’s and defendant’s mark. This factor is determined by looking at the two marks’ appearance, sound, and meaning. If a judge sees no similarity between the three sub factors, then confusion is not likely.

The third factor is the proximity of the products of services. This factor looks at what goods or services are being sold under the mark and whether the two products could be seen as coming from the same source by a consumer.

The fourth factor looks at the likelihood that the plaintiff will expand their horizons into new, related fields. If it appears that there are plans in action or a high probability that future action will be taken, then there is a likelihood of confusion.

The fifth factor simply looks at the defendant’s intent when they use the mark. If it was done maliciously or without good purpose, then there is a higher chance that a judge will find confusion between the two marks. 

The sixth factor sets out to determine whether there is any actual proof of confusion. This can come in the form of notices to the trademark owner or through proof that someone inadvertently purchased a product because they were thrown off by the trademark use. 

The seventh factor used is the degree of purchaser care. This factor looks at how much care would be taken by the consumer when purchasing the product to ensure they are getting what they sought after.  

The final factor is the quality of defendant’s products or services. If the quality is mediocre in comparison to the trademark, then there is more immediate harm done and a higher likelihood that confusion will be concluded. Conversely, if the product is of higher quality, then the defendant can stake their claim that there shouldn’t be confusion, though this doesn’t necessarily get them off the hook.

These eight factors help determine if there will be confusion between the plaintiff’s trademark and the defendant’s use of the mark. If you believe someone is infringing on your trademark, then you should consult a Los Angeles intellectual property attorney to learn your rights.