Trademarks serve to identify the source of your goods and services. From time to time, however, others will seek to benefit from your hard work in developing your brand. How? They use a trademark that is confusingly similar to yours and then, borrowing on the good will you have built in your brand, begin to steal your customers away from you using their infringing mark.
Small businesses often do not know what truly constitutes infringement and what questions they should ask when considering enforcement actions. In this regard, The Trademark Company provides the following general overview of issues that should be addressed when considering the enforcement of your brand.
1. Your Trademark Does Not Need to Be Registered to Be Enforced.
As you are probably aware, a trademark includes any word, name, symbol, or device used in commerce to identify the source of the goods or services provided therewith. In short, a trademark is a brand name such as Coca-Cola for beverages, the Nike “swoosh” for shoes, or FedEx for package delivery services.
What you may not know is that you do need to own a federally registered trademark to enforce your rights in a trademark.
A federal trademark registration is always good investment and should be used to protect your trademark(s) as a matter of course. However, federal trademark rights also exist at “common law.” In short, once you begin use of your trademark in interstate commerce under the Trademark Act of 1946 you acquire rights in that trademark usually originating on the day that you first begin selling or offering for sale your goods or services under the trademark.
2. You Need to Have Priority of Use.
In order to enforce your trademark rights against another, you need to have priority of use of your trademark before any claimed date of priority by the infringer. Priority of use, at the federal level, is established in one of two ways.
First, as stated above, you typically acquire common law rights in a trademark as of the date it is first used in interstate commerce.
Second, even if you have yet to begin use of your trademark, you may still acquire rights in the same by filing an intent-to-use trademark application with the U.S. Patent and Trademark Office. Provided that you subsequently begin use of the trademark in interstate commerce and the intent-to-use application ultimately proceeds to registration, your “priority of use” date is the day you originally filed the intent-to-use application.
So when considering enforcement, recall, you must have priority of use over the other party to enforce your trademark.
3. The Trademarks Need to Be Similar.
One of the more challenging concepts in trademark law is determining whether two marks are similar to one another in the eyes of a prospective consumer. Some take a very narrow view on this factor believing that only trademarks that are identical are likely to infringe upon one another. This, however, does not reflect the true state of the law.
In general, whether two trademarks are similar is a highly subjective determination which focuses on the appearance of the trademarks, any connotations created thereby, as well as the meanings thereof. Moreover, under the doctrine of phonetic equivalents trademarks that sound the same but that are spelled differently may be deemed to be similar (e.g., EX-TREME SPORTS vs. XTREME SPORTS). Additionally, even trademarks that appear in different languages (e.g., Red Shoes vs. Zapatos Rojos) may also be deemed similar under the doctrine of foreign equivalents.
So when determining whether two trademarks are “similar” ask yourself would the typical consumer for these goods or services think that these trademarks are similar? The answer to this question needs to be yes to successfully enforce your trademark against another.
4. The Goods or Services Need to be Similar or Related.
Also, to enforce your mark against another the goods or services need to be similar enough or related in some way that the average consumer encountering the respective trademarks would think that they originate from the same source.
Similarity of goods or services is often simple concept. If your name is Bob Ford, and you have always wanted to start a car company, odds are you will have a difficult time calling your new company FORD in connection with your automobiles.
But what about the concept of “related” goods or services. In short, if you saw frozen hamburger patties in your grocery store with the brand name “McDonald’s” you would think those nice people from Illinois are now making frozen food as well. Although McDonald’s has, to date, never delved into the frozen food market, there is a strong enough association between the two areas that recognition would be expected. Thus, one would say that McDonald’s restaurant services would be related to frozen food especially if the frozen food at issue was in the nature of hamburger patties, a food item McDonald’s is famous for providing.
So when deciding upon whether to enforce your trademark the goods or services of the alleged infringing brand must be similar or related enough to your goods or services such that the average consumer would think that they may emanate from the same source.
5. Other Considerations.
There are, of course, multiple other considerations as to whether a trademark is infringing upon your brand (e.g., similarity of trade and marketing channels, any actual confusion between the trademarks, etc.) but the big three are truly (1) priority of use; (2) similarity of the trademarks; and (3) similarity or relatedness of the goods or services.
The above represents a good starting point for any analysis as to when you should enforce your trademarks. As always, if you have any questions regarding this or any related topics Contact Us at The Trademark Company.