Trademarks are one of the legal tools people use to protect their “intellectual property”—ideas, designs, inventions, and so on. In particular, trademarks protect any word, phrase, symbol, design, etc. used by a company to identify its products or services, and distinguish them from the products or services of others. The benefit of obtaining a trademark is that it grants an exclusive right to the owner of the trademark to use that mark in the marketplace. Having an exclusive right also grants a person the right to prevent others from using that mark.
If another person uses your trademark, or something similar, you may have a claim against that person for trademark infringement. This article provides a quick summary of the legal standard of trademark infringement, lists the possible consequences of infringement, and walks through a few cases, both from Minnesota and Federal Courts.
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Trademark Law in Minnesota
Trademark protection rights come from both the common law and statutes. Minnesota Statute § 333 covers trademarks (and service marks) generally. Section 333.28 specifically addresses infringement:
Any person who shall (a) use without the consent of the registrant any mark . . . which mark is identical to or so similar to the registered mark as to be likely to cause confusion or mistake on the part of a purchaser of the goods or services or to deceive such a purchaser as to the source or origin of the goods or services; or (b) reproduce, counterfeit, copy or colorably imitate any such mark and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in conjunction with the sale or other distribution of such goods or the sale or rendering of services. . . shall be liable.
The courts also provide insight into whether a mark is likely to cause confusion by setting out six factors to consider:
“To determine whether there is a likelihood of confusion, we must consider six factors, none of which alone is dispositive: (1) the strength of the owner’s mark; (2) the similarity of the owner’s mark and the alleged infringer’s mark; (3) the degree of competition between the products; (4) the alleged infringer’s intent to “pass off” its goods as the trademark owner’s; (5) incidents of actual confusion; and, (6) the type of product, its cost, and conditions of purchase.” Luigino’s, Inc. v. Stouffer Corp., 170 F.3d 827, 830 (C.A.8 (Minn.), 1999) (citing SquirtCo. v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980)).
The burden of proof is on the party claiming infringement; it must provide enough evidence to show that the rival mark infringed before the other party must defend itself. Failure to do so will result in a victory for the alleged infringer.
Note that there is no “intent” requirement—even if someone accidentally infringes another’s trademark, he or she is still liable. The type of remedy available, however, depends on whether the other party meant to infringe.
Remedies for Trademark Infringement
The primary remedy for victims of trademark infringement is injunctive relief. Under an injunction, the infringing party must cease its infringing activity. In some cases, this penalty is small. Imagine a small company whose website advertisements infringe on the trademark rights of another company. The company needs only to change or take down its ads, a seemingly simple task. In other cases, an injunctive can be crippling. If a manufacturer produces a vast amount of products only to find that the logo on the product cannot be used, that manufacturer faces a large financial loss. Injunctions can also cause the infringing company to lose any goodwill it has built in a product, if the company has to completely change its marketing scheme. Injunctive relief may be given regardless of whether the infringer intended to infringe.
If there was intent, the victim may also receive monetary damages. The amount of damages could include the amount that the infringer profited by using the confusing mark, and also could include the actual damages suffered by the victim—lost profits, injury to goodwill or business reputation, expenses incurred in attempting to prevent customers from being deceived, etc. As with liability, the plaintiff carries the burden of proving the amount to which he or she was damaged.
Significant Trademark Cases
Both Minnesota and Federal courts have addressed the issue of trademark infringement countless times. Here are a few examples:
Minneapple v. Normandin
The Minnesota Supreme Court addressed trademark infringement in Minneapple v. Normandin, 338 N.W.2d 18 (Minn. 1983). The Minneapple Company developed the concept of “The Minneapple” as a nickname for Minneapolis, and registered a trademark design consisting of block letters spelling out “THE MINNEAPPLE” sitting on top of a snow covered apple. A similar design was used by Normandin’s business “Billy Buttons”, consisting of the letters “Minne”, a basic drawing of an apple with a happy face, then the letters “lis”—the picture of the apple phonetically substitutes for a portion of the word “Minneapolis”.
The court found that the two designs differed substantially. Normandin used the apple as a phonetic device, while the Minneapple Company used it to represent Minneapolis as a smaller version of New York City. The Minneapple design is more sophisticated, as Normandin’s design was a simple line drawing of an apple containing a smiling face. The court also found Normandin’s inclusion of copyright words to be significant. Below his design, Normandin added “© 1981 Billy Buttons”, which the court took as an indication of effort to avoid customer confusion. Ultimately, the court held that Normandin’s design did not rise to the level of similarity required to constitute trademark infringement.
Luigino’s v. Stouffer
In Luigino’s, Inc. v. Stouffer Corp., 170 F.3d 827, the United States Court of Appeals, Eight Circuit held that Luigino’s use of the mark “Michelina’s Lean ‘N Tasty” did not infringe the trademarked “Lean Cuisine” mark used by Stouffer. The Lean Cuisine brand had had great success, maintaining the highest or second-highest market share for many years; Michelina’s Lean and Tasty was a rival in direct competition. The court described the appearances of the two products:
“Lean Cuisine is packaged in white boxes, with “Lean Cuisine” printed in red lower-case lettering across the top of the front panel. In the upper left-hand corner, the word “Stouffer’s” appears in white print on a black oval background with a gold border; this is superimposed on a red diagonal ribbon, which also has a gold border. Michelina’s Lean ‘N Tasty, on the other hand, comes in white boxes with a blue background that covers the upper portion of the front panel. “Michelina’s” appears in black scripted lettering in a white rectangular box at the top center of the front panel, and “Lean ‘N Tasty” is printed just below in white capital letters. A photograph of the prepared entree appears on the front of both packages.”
Along with considering the trade dress of the packages, the court looked at the similarity of the mark itself, comparing the language of “lean cuisine” to that of “Michelina’s Lean ‘N Tasty”.
The court, in deciding whether the use of Michelina’s mark was likely to cause confusion, considered the six factors from above. While conceding that Stouffer’s “Lean Cuisine” mark was strong, and the Michelina’s Lean ‘N Tasty product was a direct competitor, the court found that the marks were very distinct. Taking away the word “lean” (which is generally descriptive of food and not registerable as a trademark) leaves “cuisine” and “tasty”; these words are not alike in form, spelling, sound or meaning, and are not likely to confuse a consumer. The court was also persuaded by the fact that the Lean ‘N Tasty introduced its product as one that “might be compared with Lean Cuisine entrees”, finding this to be a sign of an intent to compete, not to mislead.
In General Mills, Inc. v. Kellogg Co., 824 F.2d 622 (8th Cir. 1987), the court determined that “Oatmeal Raisin Crisp” and “Apple Raisin Crisp” were not confusingly similar. Even though two of the words were the same, oatmeal and apple were sufficiently different to avoid confusion.
In Beer Nuts, Inc. v. Clover Club Foods Co., 805 F.2d 920 (10th Cir. 1986), the court decided that “Beer Nuts” and “Brew Nuts” were confusingly similar. It reasoned that “beer” and “brew” are both one-syllable words beginning with “b,” three of four letters of which are identical, and because the word “brew,” when used on a package depicting an overflowing beer stein, means “beer”. Therefore, the marks were similar and likely confusing to customers.
In Conopco, Inc. v. May Dep’t Stores Co., 46 F.3d 1556 (Fed. Cir. 1994), the court found no likelihood of confusion between two skincare lotion products with similar bottle shape and label appearance, in part because of the prominent placement of logos on the front of the products.
Summary of MN Trademark Issues
Individuals and businesses use trademarks to protect the designs, phrases, and other things associated with their products or services. If another uses a mark that is similar enough to cause confusion for customers, they have infringed the trademark and will be subject to an injunction or monetary damages for harm caused. Hopefully this brief summary is enough to give a general idea of basic trademark law, and to build an understanding of when marks are similar enough to be in danger of infringement.