This post is part of a series of posts entitled A Guide To Intellectual Property Protection. For a comprehensive list of articles contained in this series, click here.

A trademark can be infringed even if the infringer is not using an identical mark. Trademark infringement occurs when another trademark is confusingly similar to the original trademark.

Whether the two trademarks are confusingly similar depends on a number of factors, including:

  • The existence of actual confusion in the marketplace between the trademarks;
  • Similarity of the appearance, sound and meaning of the trademarks;
  • Similarity of the goods and services being identified by the trademarks;
  • The degree of secondary meaning acquired by the trademarks;
  • The sophistication of the consumers who buy the particular products or services;
  • The similarity of the channels of distribution of the products or services (that is, are they both sold in the same types of stores):
  • The degree of commercial competition between the two trademark users; and
  • The distinctiveness of the trademarks (that is, are they somewhat descriptive or are they arbitrary and fanciful).

Since trademark rights are created by use of the trademark, one’s rights in the trademark prior to federal registration or reservation are limited to those areas of the country where the mark has actually been used. Thus, in the absence of federal registration or reservation, it is perfectly permissible for two organizations to use identical marks on identical goods if each of them occupies mutually exclusive geographic market areas.

As with patents, the United States Patent and Trademark Office has no program for monitoring for the potential infringement of registered marks, and will not enforce trademark rights on behalf of the owner of a federally registered trademark. Once a trademark owner determines that someone else is potentially infringing his or her trademark, the trademark owner must bear the expense of remedying the situation. Frequently, a simple letter to the infringer requesting that they cease use of the mark is sufficient. However, if the infringing party is not cooperative, the controversy is likely to end up in a federal court with all of its attendant legal expense. The commercial value of the trademark must necessarily be fairly substantial to justify the expense involved in conducting a full scale trademark infringement suit in federal court. Again, it must be emphasized that a descriptive trademark, even one having substantial secondary meaning, is much more likely to be successfully infringed than arbitrary or fanciful trademarks. Also, an arbitrary or fanciful trademark is likely to be much less expensive to defend in any legal battle, since its ownership will be more readily apparent to a court deciding the issue of infringement.

In addition to preventing others from using a confusingly similar mark within the United States, the owner of a registered trademark may also utilize the United States Customs Service for preventing products bearing confusingly similar trademarks from being imported into the United States.