Trademark infringement occurs when one trademark is confusingly similar to another‘s trademark. Generally, the first to use a trademark may continue using the mark. However, the first user may be precluded from expanding the geographic region in which the mark is used if a federal registration is not obtained. Whether 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
- The degree of similarity between 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 type of stores). Note that this factor often suggests a likelihood of confusion where both products or services are offered via the Internet
- The degree of commercial competition between the two trademark users
- The distinctiveness of the trademarks.
A trademark that is “famous” may be protected against dilution from other marks or uses of the mark even if the use is on unrelated goods as long as the trademark holder can prove that the mark is being blurred or tarnished.