Caught up in the excitement of launching a product or distracted by the business decisions that arise daily, many entrepreneurs tend to place intellectual property on the back-burner until the other necessities are taken care of. Unfortunately, for many businesses, this eventually brings about headache and regret that could have been avoided.
In the past, the response I've gotten from business owners when I brought up trademarks were along the lines of "I'm not ready to register yet" or "I'll cross that bridge when I come to it." What this tells me is that these entrepreneurs fail to see both side of the trademark coin. Maybe it is true that you can wait to register your trademark - but what if you are infringing on someone else's trademark now?
If you operate business without considering the rights of others, it may come back to bite you. One day you will open the mail to find another company's claim that you are infringing their trademark, and that you must stop using your mark immediately. You now have to decide which way you are going to pay -to fight these claims in court? to settle the matter out of court? Or, for rebranding and to scrap all of the time you spent trying to get consumers to recognize the mark you were using.
No matter how you look at it, it is a decision worth avoiding.
To prevent this from happening, you should perform a thorough search (sooner rather than later) to identify any companies that might come after you down the road. If you are operating in California and are wondering how to tell if your mark is infringing on another, consider the following carefully. Otherwise, a court may consider them for you.
1) How strong is the other mark?
Strong marks are given the greatest amount of protection. The strongest marks out there are the ones have little relationship to the goods or services they represent - they are highly "distinctive."
What does an apple have to do with computers? Is Xerox even a word?
Nothing, and it is now. Apple and Xerox are two amazingly strong, highly distinctive marks marks.
If you are using a trademark that is similar to a strong mark, you may be in trouble. Weaker marks that are more descriptive of the goods or services being provided are less likely to create infringement issues.
2) How similar is your mark to the other mark?
The more differences you can spot between your mark and another, the less likely you are to be infringing. Trademark infringement is more likely if your mark looks or sounds similar to another mark. Keep in mind that minor changes, such as creative word spellings or combining two words into one, might not make enough difference to avoid infringement.
3) How similar are your goods/services to the good/services of the other mark holder?
Ever wonder why Dove soap and Dove chocolates can coexist? It's because the products are so different. If you and another company provide similar goods or services there is a heightened risk that your mark could be infringing of that other company's trademark.
4) Are your customers/clients confused by your mark?
Instances where consumers mistook your product or service for those of another business suggest that your trademark is confusingly similar to the mark of another business. Since trademark law is designed to prevent consumers from being deceived or confused about what they are purchasing, evidence of actual consumer confusion points towards trademark infringement.
5) Do you market your business the same way as the other mark holder?
If you and another business market yourselves or advertise through the same channels, there is a greater chance that two similar trademarks will lead to confusion. If your advertising rarely overlaps with that of the other business, this consideration weighs in your favor.
6) How careful are your customers/clients?
Certain consumers tend to be more cautious than others when making purchases. For example, expensive cars and medicines are often though about in greater depth than, say, a pack of gum or light bulbs. Cautious consumers are less likely to confuse two businesses with similar trademarks. Take some time to think about what type of consumer you sell to, and what that means for your trademarks.
7) How likely is the other mark holder to expand product lines?
As we discussed above, similar products are more likely to be confused than clearly different products. However, don't think you are immune from trademark infringement if no other business makes make a product like yours. If a consumer would be right to think that your product comes from another company, even if that company doesn't make a product that is similar to yours, you may still be infringing on the other company's trademark.
8) Why did you choose your mark?
Courts look unfavorably on businesses that know that their trademark is similar to the mark of another business, and they really don't when a trademark is chosen because of its similarities to another trademark. If you are intentionally "piggybacking" off another business's trademark, a court is more likely to side against you.
About the Author:
David "Tyler" Bennett is a business and intellectual property attorney, and he is a partner at Verhagen | Bennett LLP. To learn more about David, please click here.
For questions or comments about this post, please email David directly at: David@VerhagenBennett.com
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© 2017 David T. Bennett — This article is for general information only. The information presented should not be construed to be formal legal advice nor the formation of a lawyer/client relationship.