People often ask how different does my name or logo have to be to avoid trademark infringement.
Unfortunately, there is no black and white test to determine if your name or logo infringes another's trademark.
Registered and Unregistered Trademarks
Trademark infringement can exist - whether the person claiming infringement has a registered or unregistered trademark.
A person can have trademark rights, and the right to sue for trademark infringement, when the person's trademark is federally registered, state registered, and not registered.
Three Elements of Trademark Infringement
The elements include:
- the person claiming infringement owns the trademark
- the person claiming infringement has prior or superior trademark rights to the infringer
- the infringer's use of the mark is likely to cause consumer confusion.
Prior or Superior Trademark Rights
Generally, this means that the person claiming infringement used the trademark before the infringer used his/her mark.
Prior or superior trademark rights does not mean who first registered the trademark. It is who first used the trademark.
Likelihood of Confusion
This is where things get murky.
Courts determine likelihood of confusion by examining multiple factors. It is NOT a quantitative measurement - meaning, for example, that the two marks are 25% different from one another, or the marks have three different words.
Some of the factors that courts consider are:
- strength of the prior mark
- relatedness of the products or services
- similarity of the marks
Strength of the Prior Mark
Trademarks can be categorized based on strength - from descriptive to arbitrary - with arbitrary marks being stronger than descriptive marks.
A descriptive mark is said to describe the features or characteristics of the product. For example, the mark COMFORTABLE for shoes might be descriptive.
An arbitrary mark is a real word but has no logical relationship to the products. For example, Apple is a word but has no relationship to computers.
A stronger mark weighs in favor of infringement.
Relatedness of the Products
Products between the infringer and the person claiming infringement do not need to be identical for infringement.
The products can be related when sold in the same sales channel. For example, when stores sell both car tires having the infringer's mark and wheel rims having the prior mark, the tires and rims may be related.
The more related the products, the more weight is given in favor of infringement.
Similarity of the Marks
The two marks do NOT have to be identical for infringement to exist.
Marks may look similar or sound similar.
Therefore, as an example, adding a word to the prior/superior mark may not avoid infringement. However, omitting a word may avoid infringement.
The more similar the two marks, the more weight is given in favor of infringement.