Trademark [Social] Distancing: How Close is Too Close?

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We both have active trademark practices and are constantly evaluating whether a client’s proposed trademark is available for use for that client’s goods or services. We review a lot of trademarks. While brands are valuable and very important for a business, we do our best to steer our clients away from difficulties that are ancillary to their primary mission – which typically relates to profit generation. As a result, we often advise a client that it should not use a mark because our search and evaluation efforts have revealed that another party is already using a similar mark.

When the compared marks are identical, and the parties’ goods or services are the same, that is an easy call (like when 3M was able to quickly shut down attempts by others to leverage the 3M brand to peddle N95 face masks at exorbitant prices). Usually, however, that’s not the case.

Our client’s proposed mark may not be the same as the prior mark (but may include similar words or elements) and the goods and services of the parties may not be the same either. How do we then assess the possible conflict and risk involved in our client’s use of the proposed mark?Like almost all legal issues, this determination involves consideration of a test where a number of factors are weighed. On a federal statutory level, the test for trademark infringement is whether the accused infringing mark is “likely to cause confusion, or to cause mistake, or to deceive” as to the source of the product. 15 U.S.C. § 1114(1). Actual confusion or deception of purchasers is not required, but proof of actual confusion can be quite probative in establishing whether a likelihood of confusion exists. The test is not merely a side-by-side comparison of the marks. The marks must be considered in the context in which the goods or services are sold, including the ordinary care that a person uses in buying those particular types of goods or services.

Although they vary a bit from court to court (and at the U.S. Patent and Trademark Office), most likelihood of confusion tests include consideration of these factors, in some form:

  1. the similarity between the marks (such as appearance, sound, connotation and commercial impression);
  2. the strength of the mark (ranging along this trademark distinctiveness scale, from weak descriptive marks – like COLD AND CREAMY for ice cream, to less weak suggestive marks – like AIRBUS for airplanes, to strong arbitrary marks – like APPLE for computers, and to stronger fanciful marks – like GOOGLE for online services);
  3. the relationship between the parties’ goods or services (e.g., are they complimentary goods that would be bought and used together – like shoes and socks);
  4. the marketing of the goods or services (e.g., in-person solicitation vs. mass-marketing);
  5. the customer’s degree of care in making purchasing decisions (i.e., “impulse” buys vs. careful, sophisticated purchases);
  6. the frequency and casualness of the purchase (e.g., hailing a taxi for a ride home vs. buying a ticket via NASA for a visit to the International Space Station); and
  7. the defendant’s intent in adopting the mark (like claiming your face masks are from 3M when they are not). Intent is not an element of trademark infringement, but it is helpful in proving both likelihood of confusion and in awarding damages.

The application of this test, as you can appreciate, is a judgment call. It often comes down to the client wanting to use a mark it really really likes while weighing the business risk that doing so may lead to an objection by a prior user, and the distractions and costs associated with that (as well as an unfortunate and untimely need to rebrand a product it just launched). We don’t decide whether a client can use a mark. We are mere counsellors. We assess each situation given the facts before us and provide a risk assessment to the client regarding the use of its proposed mark. Like all lawyers, sometimes our clients choose not to follow our advice. Occasionally the client gets away with it (like when the prior user never bothers to object to the client’s use of the mark). However, that third party reaction is totally out of our control. What the client can control is whether it actually uses a particular mark, based on our advice and counsel.

While we love talking to clients about branding issues, we want our clients to do what they do best – and being the defendant in trademark litigation is nowhere on any client’s Bucket List (or budget). When one of our clients begins actual use of a new brand, we like to reference the Grail Knight from Indiana Jones fame and say, “You have chosen … wisely.”

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