You have put some time and money into coming up with your trademark, registering it, perhaps designing an advertising campaign around it and placing it on your packaging.  Now, you want to defend it against infringers and you want to avoid having to change it due to the infringement allegations of another.  Because a mark cannot be registered if it infringes on another registered mark, infringement may be a grounds for someone seeking to prevent or cancel your registration using a notice of opposition or petition for cancellation.

Confusing Similarity

The test for whether one mark infringes on another is whether the marks are confusingly similar.  A major purpose of trademark law is consumer protection.  If two marks are confusingly similar, a consumer may be confused into believing that two different products or services are provided by the same business, when in fact they are provided by different businesses. Thus, the consumer may expect a certain quality previously experienced with regard to the products of one business, only to be disappointed to find it lacking.  This may lead to a loss of goodwill for the business the consumer believes (erroneously) to be producing the disappointing product.

If the marks are confusingly similar, the mark with priority (earliest use) is being infringed.  To determine whether two marks are confusingly similar, the courts have developed a multi-factor test.  Not all courts use the exact same factors, but the factors are generally very similar.  The test used at the Federal Circuit has 13 factors (known as the DuPont factors):

1. The similarity or dissimilarity of the marks in their entirety as to appearance, sound, connotation, and commercial impression.
2. The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use.
3. The similarity or dissimilarity of established, likely-to-continue trade channels.
4. The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.
5. The fame of the prior mark
6. The number and nature of similar marks in use on similar goods.
7. The nature and extent of any actual confusion.
8. The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.
9. The variety of goods on which a mark is or is not used . . . .
10. The market interface between the applicant and the owner of a prior mark . . .
11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
12. The extent of potential confusion . . . .
13. Any other established fact probative of the effect of use.

These factors are taken together and considered as a whole.  They are not given equal weight and any one factor may dominate in a given case.

Similarity In Appearance, Sound, Connotation, and Commercial Impression

The first DuPont factor is the most important.  If the marks are not similar in any way, none of the other factors are going to matter.  A court will look at how long or short the marks are and how many syllables they have, whether they contain the same words with the same meanings, how they would be pronounced, etc.

Similarity of the Goods

The second, and probably next most important factor, is the similarity of the goods or services on which each mark is used.  The key question is whether consumers are likely to be confused by the similarity of the marks.  If the types of goods on which each mark is used vary dramatically, confusion is less likely.  A consumer would not expect a tire manufacturer, for example, to also make cosmetics.  So if there were two similar marks, but one was used on tires and one on face cream, that might not be confusing to a consumer.

Similarity of Trade Channels

How are the goods or services associated with each mark sold and distributed?  If both sets of goods are sold in the same types of stores to the same types of people, confusion is more likely.

Sophistication of Buyers and Conditions Under Which Sales Are Made

Although sophistication could cut both ways, generally it is considered to make confusion less likely.  If the goods are industrial equipment and the purchasers are experts in such equipment who carefully evaluate the goods before purchase, it is less likely they will be confused by a similarity between two marks.  They have taken the time to evaluate who is selling the goods and what the goods are.

In contrast, retail sales to the general public may be “impulse” purchases, made without careful consideration.  Such buyers may have little knowledge of the goods they are buying and may be easily confused by two similar marks, which they do not consider carefully.

Fame of Prior Mark

This could also cut both ways (a customer might be very familiar with a very famous mark and might be unlikely to confuse it with a small shop, etc.) but is generally considered to make confusion more likely.  Consumers are more likely to be aware of a famous mark and to expect to see it and to have certain expectations about products with that mark.

Number and Nature of Similar Marks

If the industry is “crowded” with many similar marks for similar products, confusion is less likely.  A consumer will be used to seeing different similar marks for similar products and will not necessarily make the connection that two different but similar marks must come from the same source.

Actual Confusion

Any instances of actual confusion by consumers will suggest that the marks are confusingly similar.  If consumers are complaining to the wrong business about the quality of the product, or calling the wrong business for technical support, or contacting the wrong business to ask if they are the source of a product, based on the trademark, those are instances of actual confusion.

Length of Concurrent Use Without Actual Confusion

If two marks have been in use at  the same time over an extended period and there have been no instances of actual consumer confusion, that is an indication that the marks are not in fact confusingly similar.

The Variety of Goods On Which a Mark is Used

If a mark is only used on one type of goods, for example only tires, it is less likely that a consumer will believe that a different type of goods is made by the same business, even if the trademark is similar (think about my earlier tires/cosmetic example).  In contrast, if a mark is used on a wide variety of goods, confusion may be more likely, as a consumer will more readily believe that a different type of product is made by the same company.  For example, if the mark were used on both tires, and toys and accessories, maybe use of the mark on cosmetics would be a little less unbelievable.

Market Interface Between Applicant and Owner of Prior Mark

This factor looks at how the two mark holders have interacted in the marketplace.  Has the prior owner consented to the use of the other mark owner?  This may suggest a lack of confusion.  Have they agreed to take steps to minimize the potential confusion for consumers, for example by agreeing to continue using each mark only for certain goods, or in certain areas, or with certain marketing limitations?  This may help to avoid confusion, but it could also indicate the possibility for such confusion.  Has the prior owner failed to take steps to prevent the other owner from registering or using the mark?  That may indicate a lack of confusion.

Right of Applicant to Exclude Others

Does the applicant have a long-standing and well-known trademark associated with a specific type of goods?  This may weigh in favor of finding no confusion and allowing registration of the application, to avoid the confusion that would result from others taking advantage of the applicant’s goodwill and inability to protect their trademark.

Extent of Potential Confusion

Is any confusion likely to me “de minimus”, or minor and unimportant?  Or will there be substantial confusion that can cause real problems?  Will consumers believe they will be getting one thing but instead get another?  Will they be calling the wrong company for technical support, etc.?

Build Your Brand & Improve Your Professional Image

Registering your trademark allows you to use the ® symbol.  Using the registration symbol wherever you use your trademark helps to establish you as a professional in the minds of your customers and potential customers.  The registration symbol shows that you have invested in your brand identity and will be around for the long haul.  Trademark registration puts you in the company of the biggest, most successful companies, who regularly use the ® symbol in their marketing and advertisements.

Avoid Expensive Mistakes

As a best practice, you should never decide on any important slogan or other trademark without first researching the marks on the federal register.  What you want to avoid is adopting a new logo, putting it on all your packaging and advertising, rolling it out with a new marketing campaign, and then discovering that another company has already registered a similar trademark on the federal register.

That would mean, at a minimum, great difficulty registering your own trademark in the future and obtaining all the important benefits that come with registration.  Worse, it may result in confrontation with the other company at some point down the road when they become aware of your competing logo.  It could even mean an expensive lawsuit.

You could change your logo, and in the end you might have to.  But that would require coming up with a new logo, redoing your packaging and advertising, and maybe even coming up with a whole new marketing plan.  Any way you slice it, it’s an expensive mistake.

Gain Broader Nationwide Protection

Without federal registration, use of a trademark in commerce gives rise to common-law protection (against others using your trademark) at the state level in the region in which the trademark is used.  Federal registration protects your mark nationwide and prevents others from registering your mark or a confusingly similar mark.  Federal registration also gives you a greater scope of protection, covering not only the specific products or services with which you are using the mark, but also related products and services.

Gain Additional Remedies Against Infringers

Federal registration of your trademark provides official nationwide notice to potential infringers of your exclusive right to use your trademark.  Federal registration thus gives you the right to file suit in federal court and to recover profits or damages from other businesses that infringe on your trademark by offering their goods or services under a similar mark. It also gives you remedies in court that are more costly to an infringer, including triple damages and attorney’s fees in cases of willful or malicious infringement.

Make Your Mark Stronger in Litigation

Your federal trademark registration acts as prima facie evidence that your mark and registration are valid, that you own the mark, and that you have an exclusive right to use your mark in commerce in connection with your goods and services.

After five years of registration, your trademark becomes incontestable after filing an affidavit with the Trademark Office.  After that point, an infringer or other person who challenges your mark cannot base their challenge on the most common allegations- that your trademark is confusingly similar to another mark or not inherently distinctive.

Register Your Trademarks and Service Marks

These benefits give your trademark great strength in negotiations with potential purchasers, licensees, and infringers.  Therefore, registration is always recommended.  To register your mark, it must meet the registrability requirements of the Trademark Office and you must use or intend to use your mark in interstate commerce.  As a rough guideline, for goods, use in interstate commerce means shipment of your goods across state lines while they bear your trademark. For services, use in interstate commerce means providing a service across state lines.  To discuss the registration of your trademarks, contact a trademark attorney for a free consultation.

In one situation a client of mine (a large organization) had registered www.theirtrademark.org, but had not registered any other spellings or domain name extensions.  Needless to say, there was a long list of similar domain names that had been registered by others- www.theirtrademark.com, www.theirtradmark.com, www.theirtrademark.net, etc., etc.

A good way to avoid this is to go ahead and register all the different domain name extensions when you first start using the trademark- they cost about $10/year.  But no matter what you do, someone could always come up with a creative domain name that is confusingly similar to your trademark to profit from your brand. What do you do in that situation?

uDRP

Well, there is a solution that is somewhat expensive (much more than $10/yr!) but much less expensive than litigation.  This method is to file an arbitration complaint under the Uniform Domain-Name Dispute-Resolution Policy (uDRP).  Every registrar and registrant must agree to this policy and is bound by it.  You file a complaint with one of the designated arbitration organizations and an arbitration panel decides whether the domain name is confusingly similar to your trademark and was registered in bad faith.  If so, the arbitration panel can award the domain to you and the registrar (GoDaddy.com, or the like) automatically transfers the domain from the cybersquatter to you.

The lowest arbitration panel fee is about $1300 and you can add to that whatever your attorney charges you to prepare the complaint.  The entire process from complaint to transfer can be completed in a few months.

Negotiation

Since the total cost may run to $3000 or more including attorney’s fees, you may be able to save some money negotiating with the cybersquatter/registrant directly.  You should be able to contact the registrant using the whois information for the domain.  Often, especially in egregious cases, it is possible to negotiate a transfer for less than the cost of arbitration.

Usually, I contact the registrant, identify myself as a lawyer representing the trademark owner, and politely explain the situation and that the owner of a registered trademark is legally entitled to the use of a corresponding domain name.  I then request that the domain be transferred without mentioning any fee.  Often this is effective and you will get your domain back practically free! Other times, a payment may be required.

So I again recommend identifying domain names you may be interested in early on and registering them.  Otherwise, it might cost you a few thousand dollars to acquire each one.