Trademark Infringement Quiz

PDF page 160: Before reading this section, please watch the overview video below covering similarity, market confusion, vicarious infringement, and getting back what’s yours. Access multimedia content (http://openstax.org/books/introduction-intellectual-property/pages/ 4-9-trademark-infringement) The purpose of trademarks is to enable consumers to distinguish the source of products and services as well as help businesses defend the quality and reputation of those goods. Trademarks benefit society by protecting consumers and businesses alike, and by preventing confusion in the marketplace. This principle lies at the heart of the trademark system.

PDF page 160: It is also the basis on which the courts rule on claims of trademark infringement. The most common way that trademark infringement causes confusion is through similarity. In the words of the Lanham Act, no trademark may be registered “which so resembles” another name or mark that it will be likely “to cause confusion, or to xl cause mistake, or to deceive.” To determine similarity, the mark must be evaluated as a whole rather than through its individual components. This is important because there are only a limited number of parts—words, names, shapes, symbols, or devices—that can be used separately or together to create a unique and distinctive trademark that indicates the origin of goods.

PDF page 160: It is also the basis on which the courts rule on claims of trademark infringement. The most common way that trademark infringement causes confusion is through similarity. In the words of the Lanham Act, no trademark may be registered “which so resembles” another name or mark that it will be likely “to cause confusion, or to xl cause mistake, or to deceive.” To determine similarity, the mark must be evaluated as a whole rather than through its individual components. This is important because there are only a limited number of parts—words, names, shapes, symbols, or devices—that can be used separately or together to create a unique and distinctive trademark that indicates the origin of goods.

PDF page 160: The courts generally look at five key factors to determine if a defendant’s use of your mark is likely to cause confusion among consumers.

PDF page 160: The two most important are:

PDF page 160: • The similarities of the goods and services involved.

PDF page 160: But the court also looks at three other factors:

PDF page 160: • The strength of your mark.

PDF page 160: The basis for determining similarity, again, is not an assessment of the similarity between each component of two trademarks but of their totality as seen and experienced by the consumer. And the key test for similarity is resemblance, not sameness. In short, two marks do not have to be exact mirror images of each other to be legally similar. According to a 2003 decision by the U.S. Court of Appeals for the Federal Circuit, “Similarity is xli not a binary factor but is a matter of degree." Each and every attribute of a mark need not be replicated exactly by those of another mark to be deemed similar. But the more one mark’s attributes are similar to those of another, the greater the likelihood that there is legal similarity between the marks as a whole. The social networking site LinkedIn, for example, sports a logo made up of the joined words “Linked” and “in” displayed in a white font with the “in” component surrounded by a blue colored square with rounded edges. If

PDF page 160: The basis for determining similarity, again, is not an assessment of the similarity between each component of two trademarks but of their totality as seen and experienced by the consumer. And the key test for similarity is resemblance, not sameness. In short, two marks do not have to be exact mirror images of each other to be legally similar. According to a 2003 decision by the U.S. Court of Appeals for the Federal Circuit, “Similarity is xli not a binary factor but is a matter of degree." Each and every attribute of a mark need not be replicated exactly by those of another mark to be deemed similar. But the more one mark’s attributes are similar to those of another, the greater the likelihood that there is legal similarity between the marks as a whole. The social networking site LinkedIn, for example, sports a logo made up of the joined words “Linked” and “in” displayed in a white font with the “in” component surrounded by a blue colored square with rounded edges. If

PDF page 160: The basis for determining similarity, again, is not an assessment of the similarity between each component of two trademarks but of their totality as seen and experienced by the consumer. And the key test for similarity is resemblance, not sameness. In short, two marks do not have to be exact mirror images of each other to be legally similar. According to a 2003 decision by the U.S. Court of Appeals for the Federal Circuit, “Similarity is xli not a binary factor but is a matter of degree." Each and every attribute of a mark need not be replicated exactly by those of another mark to be deemed similar. But the more one mark’s attributes are similar to those of another, the greater the likelihood that there is legal similarity between the marks as a whole. The social networking site LinkedIn, for example, sports a logo made up of the joined words “Linked” and “in” displayed in a white font with the “in” component surrounded by a blue colored square with rounded edges. If

PDF page 160: The basis for determining similarity, again, is not an assessment of the similarity between each component of two trademarks but of their totality as seen and experienced by the consumer. And the key test for similarity is resemblance, not sameness. In short, two marks do not have to be exact mirror images of each other to be legally similar. According to a 2003 decision by the U.S. Court of Appeals for the Federal Circuit, “Similarity is xli not a binary factor but is a matter of degree." Each and every attribute of a mark need not be replicated exactly by those of another mark to be deemed similar. But the more one mark’s attributes are similar to those of another, the greater the likelihood that there is legal similarity between the marks as a whole. The social networking site LinkedIn, for example, sports a logo made up of the joined words “Linked” and “in” displayed in a white font with the “in” component surrounded by a blue colored square with rounded edges. If

PDF page 161: But similarity is not the only basis for assessing infringement. The question is also whether any similarity between marks is likely to cause confusion in the minds of consumers. This takes into account such factors as the similarity of the goods and services on which the two marks are being used. If a company that made metal chains called itself “LinkedIn,” that would less likely cause consumers to believe that the chains came from the same source as the social networking site, because the manufacture of chains is a very different line of business than running a social networking site. An entity can be guilty of contributory infringement if it intentionally encourages the infringement of a valid mark by a third party. One can also be liable for contributory infringement if one continues to produce or distribute a product with knowledge that the beneficiary is infringing a mark. As the Supreme Court held in the 1982 case Inwood Labs., Inc. v. Ives Labs., Inc. (https://www.openstax.org/l/InwoodVIves), “If a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or xlii distributor is contributorily responsible for any harm done as a result of the deceit.”

PDF page 161: But similarity is not the only basis for assessing infringement. The question is also whether any similarity between marks is likely to cause confusion in the minds of consumers. This takes into account such factors as the similarity of the goods and services on which the two marks are being used. If a company that made metal chains called itself “LinkedIn,” that would less likely cause consumers to believe that the chains came from the same source as the social networking site, because the manufacture of chains is a very different line of business than running a social networking site. An entity can be guilty of contributory infringement if it intentionally encourages the infringement of a valid mark by a third party. One can also be liable for contributory infringement if one continues to produce or distribute a product with knowledge that the beneficiary is infringing a mark. As the Supreme Court held in the 1982 case Inwood Labs., Inc. v. Ives Labs., Inc. (https://www.openstax.org/l/InwoodVIves), “If a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or xlii distributor is contributorily responsible for any harm done as a result of the deceit.”