To create order in society, there is a need for the institution of laws. Laws make it necessary for society to be run in an orderly manner. Business laws are responsible for ensuring that businesses are run in an orderly manner. One of the areas in the business sector where business laws are greatly applied in the area of trademarks. Trademarks form a very significant part of business organizations. In this article, the importance of trademarks will be discussed together with the laws that govern trademarks being discussed.
By covering the laws that govern trademarks it will be possible to highlight when there is an infringement of trademarks. This article, therefore, will basically show circumstances under which there is a likelihood of trademark infringement taking place. By drawing from a wide variety of sources, this article will highlight the various situations through which infringement of trademarks is likely to take place.
A trademark has been comprehensively defined as “word, symbol, or phrase, used to identify a particular manufacturer or seller’s products and distinguish them from the products of another” (Trademark, n.d., p. 1). Trademark, therefore, distinguishes a product from other products, especially those which are similar or which can act as substitutes. Trademarks are used to identify goods and service marks are used to identify services; service marks are basically treated as trademarks.
Trademarks are protected by laws as they serve to distinguish goods from others. Laws governing trademarks are mostly federal laws though there are some state laws that offer protection to trademarks. The federal law provides the main source of trademark protection after being developed over a long period of time; from 1946 after the Lanham Act was instituted.
In order to avoid unnecessary struggles on whether trademark rights have been infringed upon or not, the federal law has set up a means of identifying whether a mark ought to be the trademark or not. This is very significant as it will help to set the trademarks aside and make it clear among the corporate bodies as well as individuals that a given mark is a trademark and thus avoid unnecessary hostilities which arise from the common use of such marks.
To bring about order in the business world in regard to what should and should not be a trademark, it is necessary to set up some guidelines. The following criteria are used as a requirement for a trademark:
A mark must be distinctive – that is, it must be capable of identifying the source of a particular good. In determining whether a mark is distinctive, the court’s group marks into four categories, based on the relationship between the mark and the underlying product: (1) arbitrary or fanciful1, (2) suggestive2, (3) descriptive3, or (4) generic4. Because the marks in each of these categories vary with respect to their distinctiveness, the requirements for, and degree of, legal protection afforded a particular trademark will depend upon which category it falls within. (Trademark, n.d., 1)
Before a mark can be protected, it must first meet one or more of the above criteria. If a mark passes the criteria for registration as a trademark then it has to be registered through the U.S. Patent and Trademark Office. A trademark can also qualify for protection by a particular body if the body was the first to use the mark for commercial activities. Being the first to use a trademark has however been pointed out to have some limitations pertaining to geographical protection.
If a body uses a given commercial mark for the first in a given region then the protection is only limited to that given region of operation such that it becomes possible for a body to use the same mark in a different geographical area where the body which used the mark for the first time does not operate. Registering a given mark is more advantageous to the registering body5 just depending on the protection which arises from being the first to use the trademark.
It is worth noting that trademarks can also be lost. Trademarks are lost when they are abandoned. Abandonment in this case implies non-use of the mark for a period of three years. There is also a possibility of a trademark being lost if the licensing is not carried out properly. Trademark is also likely to lose protection by becoming generic over time.
The above is a brief overview of issues that surround trademarks. The next section tackles what constitutes trademark infringement.
As discussed above, trademarks are used for the purpose of differentiating goods and services. Trademarks play a very significant role for corporate bodies because they help their customers to point out their goods from the rest. On this basis, therefore, it becomes very possible for a state of confusion to arise if a different business organization tries to use a similar mark in distributing its goods (Kizza, 2010). Actually, infringement of trademarks is usually on the basis of “likelihood of confusion” (Trademark, n.d., p. 1); more particularly it has been pointed out that,
The use of a trademark in connection with the sale of a good constitutes infringement if it is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods. (Trademark, n.d., p. 1)
Elsewhere, Ventre (2006) gave a comprehensive approach to what trademark infringement constitutes:
Infringement is typically defined as someone attempting to achieve financial gain by using someone else’s trademark. That someone else’s trademark must be used in commerce on goods or services of the owner for infringement to occur. Trademark infringement is commonly understood to include the concept of unfair competition. Thus, trademark infringement usually occurs when there is a false designation of origin, false description of a product or service, trade dress copying, or trademark dilution of famous marks. When any of these actions occur, the consumer is likely to be confused and consumer confusion is an important component of trademark infringement. (Ventre, 2006, p. 1)
Once an infringement is deemed to have taken place the affected body can move to stop such infringement through the provisions under 15 USC 1052, 15 USC 1124, 15 USC 1072, 15USC 1065 and 15 USC 1057(b). According to Tysver (2008), courts examine the factors listed below for determination of whether a “likelihood of confusion” 6 has been created in a given situation:
The similarity in the overall impression created by the two marks (including the marks’ look, phonetic similarities, and underlying meanings); the similarities of the goods and services involved (including an examination of the marketing channels for the goods); the strength of the plaintiff’s mark; any evidence of actual confusion by consumers; the intent of the defendant in adopting its mark; the physical proximity of the goods in the retail marketplace; the degree of care likely to be exercised by the consumer; and the likelihood of expansion of the product lines. (Tysver, 2008, p. 1)
It has been argued that the first two aspects listed above are the most essential and hold much significance. However, the other aspects cannot be eliminated as the first two cannot win a claim against infringement on their own: Tysver (2008) observed that “it is possible for the same, identical mark to be used in the same geographic area without any trademark infringement occurring, as long as the goods or services of the parties are sufficiently dissimilar” (p 1). Tysver (2008) logically argued that even if the two trademarks are similar, the likelihood of the marks confusing the customers is least likely to happen because the “goods and services are sufficiently dissimilar” (Tysver, 2008, p. 1) thus making the “likelihood of confusion” one of the basics for determining the occurrence of trademark infringement.
As Tysver (2008) pointed above, the similarity of symbols might not necessarily cause an infringement though in some cases this does happen. The Trademark Dilution Revision Act of 2006 offers protection to trademarks that are well known and bans the use of such trademarks in a manner “that is likely to cause dilution by blurring or dilution by tarnishment, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury” (Tysver, 2008, p. 1).
The above act was enacted to avoid the dilution of famous trademarks through what is referred to as “dilution by tarnishment” (Tysver, 2008, p. 1) and the infringement comes about as a result of “harming the reputation of the famous mark by creating an association in the mind of the consumer that arises because of the similarity between a mark or trade name and a famous mark” (Tysver, 2008, p. 1). The act also protects the distinctiveness of well-known trademarks: “this legislation also defines dilution by blurring-which is an association arising from the similarity between the marks that impair the distinctiveness of the famous mark” (Tysver, 2008, p. 1).
Radack (1996) summarized the infringement under this section as being two ways “blurring of the distinctiveness of the mark and/or tarnishing a famous” (Radack, 1996, p. 1). On the issue of trademark infringement, it should be noted that there many factors which must be put into consideration but basically the very basic factor for a case of trademark infringement is proving that a state of confusion is has been created.
Remedies of Trademark Infringement
In case an infringement is proved to have taken place, the law provides a number of ways through which remedy is carried out. In most cases, the infringing party is liable to compensate for the damages incurred by the rightful owner of the trademark (Louisiana, 1998). Depending on individual cases, there are many actions likely to be implemented including but not limited to seizing the products which have the trademarks or which have somehow led to the confusion or have tarnished a well-known trademark (Raju et al., 2008, p. 178).
The use of a trademark is a popular business practice that is meant to distinguish different goods and services. Trademarks are especially significant when similar goods are involved as they make it possible for consumers to differentiate goods from different manufacturers or producers. Cases arise when business bodies or individuals engage in unfair competition by targeting rivals’ trademarks. This is called trademark infringement and can basically lead to the “state of confusion”, tarnishment, or blurring of the distinctiveness of a trademark.
For a claim for a trademark infringement must, it must be shown that the situation at hand has caused a state of confusion or is likely to cause a state of confusion on the general public from the affected party draws its customers. Apart from the causing of a state of confusion, there are other states which qualify a practice to be viewed as a one which infringes upon the trademarks. This happens for the cases of well known trademarks whereby a similar trademark is developed for commercial activities. It has been argued that the new trademark is likely to cause tarnish the image already created by the older trademark. It has also been argued that the old trademark will likely lose its distinctiveness as a result of the emergence of the new trademark which closely resembles the old one.
It has been shown that for a case of infringement to go through it must be shown that there was/is a likelihood of a state of confusion arising from the infringement. Some cases may not necessarily involve infringement but tarnishing and making it hard for a popular trademark to be outstanding.
Kizza, M.J. (2010). Ethical and Social Issues in the Information Age. New York, NY: Springer.
Louisiana. (1998). Louisiana bar journal. Louisiana: Louisiana Bar Association.
Radack, D. (1996). Trademark Infringement and Dilution Aspects of Unfair Competition Law.
Raju et al. (2008). Biotechnology and patent law: patenting living beings. New York, NY: Cengage Learning.
Trademark. (n.d.). Overview of Trademark Law.
Tysver, D. (2008). Trademark Infringement.
Ventre, L. (2006). Trademark Infringement.
- An arbitrary or fanciful mark is a mark that bears no logical relationship to the underlying product.
- A suggestive mark is a mark that evokes or suggests a characteristic of the underlying good.
- A descriptive mark is a mark that directly describes, rather than suggests, a characteristic or quality of the underlying product (e.g. its color, odor, function, dimensions, or ingredients)
- A generic mark is a mark that describes the general category to which the underlying product belongs
- Registration of a mark with the PTO gives a party the right to use the mark nationwide, even if actual sales are limited to only a limited area. This right is limited, however, to the extent that the mark is already being used by others within a specific geographic area. If that is the case, then the prior user of the mark retains the right to use that mark within that geographic area; the party registering the mark gets the right to use it everywhere else.
- Note that if a situation creates a state of confusion then it is assumed that an infringement has taken place.