The trademark owner has the right to prevent infringement – the use of a reproduction, counterfeit, copy or imitation of the trademark or substantially similar mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services in a way that is likely to cause confusion or to cause mistake in the marketplace. The remedies for infringement include injunctive relief and, in some cases, the recovery of profits and damages. To constitute trademark infringement, the unauthorized use must create a likelihood of confusion as to the source of the goods in question. To determine whether likelihood of confusion exists, courts look to a number of key factors including: (l) the strength of the trademark; (2) the similarity between the trademarks; (3) the relatedness of the goods; (4) evidence of actual confusion; (5) sophistication of the buyers; (6) the defendant's intent in selecting the mark; and (7) the likelihood of expansion of the product lines. Any one of these factors may be decisive if strong enough as an evidentiary matter.
1. Strength of the Trademark
The strength of a trademark depends on its distinctiveness. A trademark's distinctiveness depends on the extent to which it is inherently distinctive (whether it is fanciful, arbitrary, or suggestive) and also on the extent to which the public identifies the trademark as identifying a particular source or goods and/or services.
2. Similarity Between the Trademarks
The test for determining similarity between trademarks is the general impression created by the trademarks, considering any and all factors consumers are likely to perceive and remember, including the sound, sight and meaning of the marks. For example, although the trademark "RUFFLES" and the word "RUFFLED" for potato chips were found to be similar in both appearance and sound, the court held there was still a question as to similarity because of the differences in the way the trademarks appeared on the packaging (different fonts and colours) and because the name of the user of the trademark "RUFFLES" appeared prominently above the mark.
3. Relatedness of the Goods
The test for determining whether the goods are too closely related as to be likely to cause consumer confusion includes an analysis of such factors as advertising orientation, geographical and cultural audiences, price of the goods, and marketing channels in which the goods are sold.
4. Evidence of Actual Confusion
Evidence of actual confusion may include testimony of consumers who have been confused and results of consumer surveys. Surveys are also useful to plaintiffs to show dilution or secondary meaning and to defendants who want to show generic nature. To be probative, however, the survey must have been fairly prepared and its results directed to the relevant issues. In addition, misdirected mail or phone calls can serve as evidence of actual confusion, especially if they are not insubstantial in light of the total volume of business activity and if they are not the result of careless mistakes.
5. Sophistication of Buyers
More discriminating or knowledgeable consumers are often less likely than the general public to be confused by a similarity in trademarks. Therefore, sales of goods made solely to a more sophisticated class of consumer may be less likely to cause confusion than sales to the public in general. Aside from professionals and experts in the fields in which the goods are sold, consumers can be considered sophisticated if they are well aware of certain facts which would help distinguish the two conflicting trademarks.
6. Defendant's Intent
In weighing the likelihood of confusion, courts consider whether the later user of the allegedly infringing trademark adopted its trademark with the intention of capitalizing on the first user's reputation and goodwill. An intent to cause confusion may be inferred if the later user knew of the first user' s mark, had the freedom to select any trademark, and eventually chose to use a similar trademark. In addition, knowledge of the first mark may be inferred if the mark is strong and well known.
7. Likelihood of Expansion
Even if the trademark is used on different goods or in different fields, the first to use the trademark may prevent the later use if it was likely to "bridge the gap" between the fields, that is, to expand into the later user' s field. The first user would have the burden of proving it had a reasonable present intention to bridge the gap or that it was otherwise likely to do so based on past practices or the nature of the industry.
8. Causing Marks to Become Generic
Another cause of action relating to trademarks is so-called "genericide," that is, using another's trademark improperly and in such a way as to cause it to become a generic term. This type of action is relatively untested. Of the few courts that have addressed the problem, most have suggested that such an action would be based on a dilution theory. One court has held that a claim for dilution was established when the defendant referred in an advertisement to plaintiff's trademark and identified its own product as a "version" of the plaintiff's product. Although the cases discussing "genericide" have generally dealt with improper reference by competitors, the doctrine may be applied to improper references in other products, such as dictionaries, encyclopedias, magazines, and even Internet products.
9. Trademark Disparagement
An infrequently invoked theory to protect trademarks from improper use is trade libel or product disparagement. An action for trade libel is similar to an action for defamation, but is more akin to unfair competition because, unlike classic defamation, it protects goods and business from injurious falsehoods. A claim of trade libel could be made against a company which displays on the Internet false assertions disparaging another' s product or services.