For more on trademark infringement, check out the podcast version.
We are continuing our discussion on trademark basics. In the past couple of weeks, we have covered: the difference between a trademark and a service mark and the three levels of protection available for your mark. This week, we are going to discuss from what you are protecting your mark.
“Infringement” sounds like such a scary word. It is, however, broken down quite simply in its definition: “an act that interferes with one of the exclusive rights of a … trademark owner.” That certainly is helpful right? So, what is it that can interfere with one of the exclusive rights of a trademark owner. A trademark owner has the right to:
- Use the trademark to identify goods and services
- License the trademark to others to use
- Register the trademark with the state or federal trademark office
- Restrict others from using the trademark
- Transfer the rights to use the trademark
- But, those rights have limits.
For starters, trademark infringement is a bit more specific than the definition above. Trademark infringement is defined as use of a word, symbol or phrase that is the same (or confusingly similar) to the trademark of the original owner. It does not matter if the mark is the same or confusingly similar unless the use of the infringing mark is likely to cause confusion, deception, or mistake about the source of the goods or services. That means, trademark infringement only happens if the potentially infringing trademark is selling the same or similar products or services to the products or services you sell using your mark. If you believe you have found an infringing trademark, you may have a hard time stopping the use of the infringing mark if they are not selling goods or services that are the same as yours. If the products or services are not the close, there is no likelihood of confusion.
When you are just getting started, your trademark does not have a ton of traction. So, there is a presumption that people are not using your trademark to beef up their business that is not, in any way, competing with yours. Now, if your trademark has become “distinctive”, then you may be able to protect use of your trademark from anyone to avoid what is called “dilution” of your trademark.
So, let’s look at some real world examples of how this plays out:
Confusingly Similar – The Makings of Trademark Infringement
We are all familiar with Apple. When the name Apple is said, most people have some device on their person that has the Apple logo on it. At least, that is where your mind goes when I mention Apple, right? Not everyone knows about Apple Corps., the Beatles holding company which owns Apple Records.
Did you know, there have been a number of legal battles over the use of the Apple trademark between these two companies?It all began with a suit for simple infringement. It was settled, and there was an agreement between the two companies that Apple would not enter the music business (right!).
There were a number of other issues as Apple Computers and computers in general began to play and record audio. Finally, a new settlement agreement was reached indicating that Apple Records could use the trademark for any works whose principal content was music and Apple Computers could not use the trademark for anything distributed on physical media.
Then iTunes happened. Of course, Apple Records sued over breach of agreement, but it was ruled that Apple Computers had not violated the trademark agreement. Now, of course, we have Beatles music on iTunes because anything can be solved with enough money 😉
The point is, it is not always clear cut what makes for infringement. When all of this started, neither of the trademarks was as prolific as they are now. Though, Apple Records came first, they have both worked to exist together as their trademarks entered the same arena of products.
Common Use of Your Trademark
Though one would think that having everyone use your trademark to describe any type of product that is similar, this can actually make you lose your trademark. Two prime examples are “Aspirin” and “Cellophane”. Once upon a time, each of these were trademarks. They fell into such common use, however, that they are considered to be the generic name for the product and no long have distinctiveness as a source of the product. The lesson to learn here is that you want to work to protect your trademark from common use to avoid this. It is good for everyone to know your name, but not for everyone to use it for any variation of a product similar to the one you produce. (More on that soon!)
That, is what we will discuss next week.
With this understanding of infringement, we will move into how to protect your trademark and what you need to do when you spot an infringing trademark. We will also talk about distinctiveness of your mark. So, stay tuned as we dig further into trademarks and how they affect your business.