Trademark Defined:  A trademark is a designation used to “identify and distinguish” the goods or services of a person.

What rights does Trademark Law Protect?

(1) Consumer Confusion: In theory, trademark law protects the consuming public, not the trademark holder, by ensuring the goods and services they purchase are from a legitimate source.  An action for infringement of trademark rights usually requires proof of “likelihood of confusion.”

The test: 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.  In deciding whether consumers are likely to be confused, the courts will typically look to a number of factors, including: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; (7) the defendant’s intent. See Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961).

(2) Dilution of “Famous” Marks: A “famous” trademark can be diluted by use that is not likely to confuse.  In deciding whether a mark is “famous,” the courts will look to the following factors: (1) the degree of inherent or acquired distinctiveness; (2) the duration and extent of use; (3) the amount of advertising and publicity; (4) the geographic extent of the market; (5) the channels of trade; (6) the degree of recognition in trading areas; (7) any use of similar marks by third parties; (8) whether the mark is registered.  15 U.S.C. § 1125(c).

Blurring: Blurring occurs when the power of the mark is weakened through its identification with dissimilar goods. For example, Kodak brand bicycles or Xerox brand cigarettes. Although neither example is likely to cause confusion among consumers, each dilutes the distinctive quality of the mark.

Case or no case:  Lifetime Fitness vs. Lifetime (Television)?

Tarnishment: Tarnishment occurs when the mark is cast in an unflattering light, typically through its association with inferior or unseemly products or services.  For example, in a recent case, ToysRUs successfully brought a tarnishment claim against, a pornographic web-site. See Toys “R” Us v. Akkaoui, 40 U.S.P.Q.2d (BNA) 1836 (N.D. Cal. Oct. 29, 1996).

Another Example: “Victor’s Little Secret” as name for adult novelty and lingerie sued by “Victoria’s Secret.”  The trial court held: “[C]onsumers who hear the name ‘Victor’s Little Secret’ are likely automatically to think of the more famous store and link it to the Moseley’s adult-toy, gag gift, and lingerie shop.  This, then is a classic instance of dilution by tarnishing (associating the Victoria’s Secret name with sex toys and lewd coffee mugs) and by blurring (linking the chain with a single, unauthorized establishment).”  On appeal, the United States Supreme Court reversed, holding that a plaintiff bringing a dilution claim must show actual dilution, not mere “likelihood” of dilution. See Victor Moseley et al., dba Victor’s Little Secret v. V Secret Catalogue, Inc., et al. 573 US 418 (Supreme Court, March 4, 2003).

Next: Types of Trademarks

[1]These materials address only the Federal Lanham Act and do not address individual state laws.


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