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by Zofia Rubens

If any person, without consent of the trademark owner, uses a trademark in connection with the sale, distribution or advertising of any goods or services in a way that is likely to cause consumers confusion, she may be liable for trademark infringement.[1] In other words, to prevail on a claim for trademark infringement, a plaintiff must prove that (i) the plaintiff’s mark is entitled to protection and (ii) that the defendant’s use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant’s goods with plaintiff’s goods.[2]

Trademark protection aims at preventing a later user from employing a confusingly similar mark that would exploit the reputation a first user has created for its trademark.[3] The key issue in an action for trademark infringement, however, is whether ordinarily prudent buyers are likely to be misled or confused as to the origin of the goods in question.[4] Absent such consumer confusion, a defendant will generally not be held liable for plaintiff’s mark infringement.[5]

 

Trademark Entitlement to Protection. Prior use or successful registration of a mark creates protection.[6] If a mark has been long and evidently used in commerce, there is a high likelihood that it will achieve widespread recognition among consumers. Such recognition, in turn, increases the likelihood that consumers encountering a confusingly similar mark of a second user may mistakenly assume that it comes from the first user of the mark.[7] Federal registration of a mark provides evidence that its registrant has an exclusive right to use the mark in commerce in connection with the goods or services specified in the registration.[8]

An unregistered mark is entitled to protection under trademark statutory law (the Lanham Act) if it would qualify for registration as a trademark.[9] It means that a mark must be distinctive enough to distinguish the registrant’s products from others’ products.[10] Marks are generally classified as generic, descriptive, suggestive, or arbitrary.[11] A generic term is a common name that describes a kind of product (e.g. “Bicycle” for retail bicycle stores or “Aspirin” for pain relief medication as this term, because of long-term widespread, non-trademark use, became generic [12]). A generic term is never entitled to trademark protection.[13] A descriptive mark expresses something about a product, its characteristics, qualities, ingredients, intended purpose and such (e.g. mark “Trim” for fingernail clippers[14] ).[15] It is protected only with a showing of secondary meaning (i.e. showing that consumers have started to associate the mark with a particular producer or source)[16] unless a mark is registered in which case proof of secondary meaning is not required for the mark to be protectible.[17] A suggestive mark suggests the product but it may take imagination to understand the nature of the product (for example “Orange Crush” for an orange-flavored beverage).[18] A mark classified as arbitrary or fanciful is afforded the greatest protection. Such mark is a made-up name or has little or no relationship to the kind of product or services on which it is used (e.g. “Exxon” for oil products).[19]

Consumers Confusion. To determine whether there is a likelihood of consumers confusion, courts ordinarily apply and balance the so-called Polaroid factors: “(1) the strength of the plaintiff’s mark; (2) the similarity of plaintiff’s and defendant’s marks; (3) the competitive proximity of their products; (4) the likelihood that plaintiff will “bridge the gap” and offer a product like defendant’s; (5) actual confusion between products; (6) defendant’s good faith in adopting its mark; (7) the quality of defendant’s product as compared to plaintiff’s; and (8) the sophistication of the purchasers.”[20]

The strength of the mark. The strength of the plaintiff’s mark refers to the mark’s ability to “identify goods sold under it as coming from one particular source.”[21] There are two components of a mark’s strength: its “inherent distinctiveness” (whether the mark is generic, descriptive, suggestive, or arbitrary) and its distinctiveness in the marketplace (recognition or fame that mark has earned among consumers).[22] For example, mark “Streetwise” designating a foldable, laminated street map was held to be suggestive thus inherently distinctive (the term suggested the features of the product and required the buyer to use his or her imagination to sort out the nature of the product) but weak in the marketplace for maps as other map producers have used the word “street” in their products’ names.[23]

Proximity of the products. The competitive proximity of the products refers to whether and to what extent the two products compete with each other.[24] It seeks to determine if “the two products have an overlapping client base that creates a potential for confusion.”[25] It has two elements: market proximity (whether the two products are in related areas of commerce) and geographic proximity (geographic separation of the products).[26] When the two users of a mark operate in different areas of commerce, consumers are less likely to think that products marketed under similar brands come from the same source.[27]

Bridging the gap. Bridging the gap factor refers to the likelihood that the plaintiff will enter the market of the defendant’s product to compete against the defendant.[28] This factor is irrelevant when the two products or services are in direct competition (for example two sellers of coffee products).[29]

Defendant’s good faith. This factor refers to whether a later user of a mark adopted the mark with an intention to cause confusion between the products or services to capitalize on the goodwill and reputation built by a prior user of the mark.[30]

As an example, the court has found trademark infringement in a case of the “Virgin” trademark. Plaintiff used the “Virgin” mark on large, popular stores selling music recordings and various consumer electronic equipment. Defendant started to use mark “Virgin Wireless” on stores selling wireless telephone services and phones. The court has found defendant’s mark to be likely to cause confusion because of the strength of the plaintiff’s “Virgin” mark, similarity of the two marks (different colors and typeface were not relevant as both marks used the same word), proximity in commerce of CD players and phones, the fact that even though plaintiff has not sold phones or offered telephone services, it already had plans to do so in the near future, and because there was some evidence of actual consumer confusion as a former employee of defendant, who worked at a store branded as Virgin Wireless, stated that individuals used to ask him if the store was affiliated with plaintiff’s Virgin stores.[31]

On the other hand, the court determined that there was no trademark infringement in a case brought by Starbucks Corp. against a company engaged in the sale of coffee products that was doing business as Black Bear Micro Roastery (“Black Bear”). Black Bear began selling a dark roasted blend of coffee called “Charbucks Blend” and later “Mister Charbucks.” The court held that there was no likelihood of consumer confusion even though “Starbucks” is a strong mark and there was some evidence of actual confusion as Starbucks presented results of a telephone survey in which 30.5% of 600 respondents immediately thought of ‘Starbucks’ when hearing “Charbucks”. Factors that weighed in favor of Black Bear were: minimal similarity of the two marks because of the prominence of “Black Bear” on the Charbucks products, no report of a single customer being confused even though Charbucks mark has been used for eleven years, no intent on the part of Black Bear to mislead the public that Charbucks products were Starbucks products as, given its small operation and local customers’ dislike of large corporations, such association, as testified by the owner, would be negative for Black Bear.[32]

The court also held that there was no infringement of trademark “Brennan’s,” used in connection with a well-known New Orleans restaurant, by trademark “Terrance Brennan’s Seafood and Chop House” used on a New York restaurant in reference to the name of its well-known chef. The court found that the Brennan’s was a strong mark but among New Orleans diners and not among New York diners. There was close market proximity of the services as both are upscale restaurants but the two restaurants were geographically remote and there was no evidence of strong reputation of “Brennan’s” restaurant in the distant market, i.e. in New York. The two marks apparent similarity was not dispositive then as it would not cause consumer confusion. The court also held that diners in the high-end restaurants tend to be sophisticated and thus less likely to be confused.[33]

In sum, trademark infringement determination is very fact specific. Using the above factors to analyze the likelihood of consumers confusions as to the source of the products or services at issue, should serve as guidance as to whether trademark infringement can be established.

 

[1] 15 U.S.C.A. § 1114; Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 742 (2d Cir. 1998); Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 102 (2d Cir. 2010).

[2] Gruner + Jahr USA Pub., a Div. of Gruner + Jahr Printing & Pub. Co. v. Meredith Corp., 991 F.2d 1072, 1074 (2d Cir. 1993); Virgin Enterprises Ltd. v. Nawab, 335 F.3d 141, 146 (2d Cir. 2003); Brennan’s, Inc. v. Brennan’s Rest., L.L.C., 360 F.3d 125, 129 (2d Cir. 2004); Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 114 (2d Cir. 2009); Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 102 (2d Cir. 2010).

[3] Streetwise Maps, Inc., at 742, 745.

[4] Starbucks Corp., at 114; Brennan’s, Inc. v. Brennan’s Rest., L.L.C., 360 F.3d 125, 128 (2d Cir. 2004).

[5] Gruner + Jahr USA Pub., a Div. of Gruner + Jahr Printing & Pub. Co., at 1074.

[6] Brennan’s, Inc. at 134; Virgin Enterprises Ltd., at 146.

[7] Virgin Enterprises Ltd. at 148.

[8] Gruner + Jahr USA Pub., a Div. of Gruner + Jahr Printing & Pub. Co., at 1076; 15 U.S.C. § 1115(a).

[9] Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 381 (2d Cir. 2005).

[10] Star Indus., Inc., at 381.

[11] Streetwise Maps, Inc., at 744; Gruner + Jahr USA Pub., a Div. of Gruner + Jahr Printing & Pub. Co. at 1075; Star Indus., Inc., at 385.

[12] Protecting Your Trademark. Enhancing Your Rights Through Federal Registration. Basic Facts About Trademarks. United States Patent and Trademark Office, at 8. https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf

[13] Gruner + Jahr USA Pub., a Div. of Gruner + Jahr Printing & Co., at 1075.

[14] W.E. Bassett Co. v. Revlon, Inc., 354 F.2d 868 (2d Cir.1966).

[15] Gruner + Jahr USA Pub., a Div. of Gruner + Jahr Printing & Pub. Co., at 1076.

[16] Thompson Med. Co. v. Pfizer Inc., 753 F.2d 208, 217 (2d Cir. 1985).

[17] Thompson Med. Co. at 216.

[18] Gruner + Jahr USA Pub., a Div. of Gruner + Jahr Printing & Pub. Co., at 1076.

[19] Gruner + Jahr USA Pub., a Div. of Gruner + Jahr Printing & Pub. Co., at 1075.

[20] Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.1961); See, e.g. Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 115 (2d Cir. 2009); Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 384 (2d Cir. 2005); Brennan’s, Inc. v. Brennan’s Rest., L.L.C., 360 F.3d 125, 130 (2d Cir. 2004); Virgin Enterprises Ltd. v. Nawab, 335 F.3d 141, 146 (2d Cir. 2003); Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 743 (2d Cir. 1998); Gruner + Jahr USA Pub., a Div. of Gruner + Jahr Printing & Pub. Co. v. Meredith Corp., 991 F.2d 1072, 1077 (2d Cir. 1993).

[21] Streetwise Maps, Inc., at 743.

[22] See, e.g. Brennan’s, Inc. at 131; Streetwise Maps, Inc., at 743; Virgin Enterprises Ltd., at 141.

[23] Streetwise Maps, Inc., at 744.

[24] Streetwise Maps, Inc., at 745.

[25] Brennan’s, Inc., at 134.

[26] Brennan’s, Inc., at 134.

[27] Virgin Enterprises Ltd. at 150.

[28] Streetwise Maps, Inc., at 743.

[29] Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 115 (2d Cir. 2009).

[30] Streetwise Maps, Inc., at 745; Starbucks Corp., at 117-118.

[31] Virgin Enterprises Ltd. v. Nawab, 335 F.3d 141 (2d Cir. 2003).

[32] Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009).

[33] Brennan’s, Inc. v. Brennan’s Rest., L.L.C., 360 F.3d 125 (2d Cir. 2004).