Scriptalicious Blog

When is it okay to use a trademark on your website? Is your logo or product too much like the competitor's? When do you risk being shut down and possibly taken to court, even being sued for extensive damages? Combined with some common sense and these 8 tests for trademark infringement, you can arm yourself against most of the common mistakes in infringement law.

I'm fortunate to be close to someone with extensive experience in trademark law. Gaining some very useful knowledge on up-to-date trademark infringement law, I created this document combining the elements of the “eight-part trademark infringement test” with some of my own experience and practical advice.

Disclaimer: I am not a lawyer. These tests are meant to be a useful guide, not a substitute for legal counsel. These are my own words but are based on advice from a professional trademark attorney.

Test #1: Strength of the Priority Trademark

The stronger trademark is the priority mark, and has more protection around that trademark. The stronger mark is the one that's advertised more, is more unique, and less dilute. Clear geometric designs are easily protectible marks, but the more simple they are the more likely there are similar marks, making them more dilute.

Test #2: Proximity of Goods and Services

Proximity refers to similarity in the goods or services offered. Similar trademarks are allowable if the products they represent are very different.

A cheese company and an axe company might use a geometrically similar wedge shaped logo, but the companies compete in totally different markets so it's probably fine (I've never heard of axe-cut cheese before). However, two cheese companies with a similar geometric logo will raise a red flag on the proximity test.

Test #3: Similarity of the Mark

The more similarity between two trademarks, the more likely there will be confusion between the marks, and the more likely infringement can take place. Trademarks can be similar in appearance, sound, and meaning.

Associating the company name with a mark can assist against infringement by keeping marks dissimilar even when they might share certain visual elements, audio elements, or have confusingly similar interpretations. That means for generic or somewhat similar marks, adding your company name everywhere the mark is used will greatly reduce possible confusion.

Test #4: Priority Mark is Favored for Dissimilar Goods

If the goods or services are not similar but the trademarks have similarities, it is highly likely that the priority mark will get the benefit of the doubt.

While distance in proximity of goods can protect two similar marks, strong brand names can reasonably expand into similar markets and the priority mark may be stronger. For example – Nike may start selling sports drinks, and Microsoft might start selling hardware. Things get particularly sticky with companies potentially operating in many different markets. If you're registering or protecting a mark of this nature it's necessary to have experienced legal counsel.

Test #5: Actual Confusion

When people actually confuse two trademarks, it's very strong evidence of brand name confusion. Since this kind of confusion can cause immediately evident damage or costs for the infringed party, such as potential customers calling the other company, misdirected mail, phone calls, emails, etc.

An example of this in software is a company selling a confusingly similar application as another established company, except it is of poorer quality, has different licensing requirements, etc. This can lead to inadvertent license violations on behalf of users, support requests sent to the wrong company, and other costly problems.

Test #6: Intent to Benefit From Priority Mark

An intent to benefit from the priority trademark holder's good will is strong evidence of infringement.

In other words, if you use a priority holder's trademark or a confusingly similar mark of your own, with an intent to benefit from the strength of the priority mark, it shows a strong motive to infringe.

Test #7: Disparate Quality

Goods or services of poorer quality than a priority holder's mark can be very damaging to a trademark. If a trademark is confusingly similar to another, yet the quality of their goods is much lower, it's not only confusing people but it's damaging the other brand name.

Disparate quality of goods and services could be grounds for compensation from the infringing party.

Test #8: Sophistication of Consumers

The potential for confusingly similar trademarks is influenced by the sophistication of the consumer – does their purchase involve little thought, or is it a big deal?

Smart people still use shampoo (most of them), but the necessary sophistication levels for purchasing shampoo are quite low. It would be easier for someone to buy the wrong brand of shampoo than to head to the dealership and buy a new Ford when you meant to buy Dodge – the sale requires more sophistication from the consumer engaged in the sale.

Conclusion

Consulting with a trademark attorney is expensive, and for most small businesses it's often unnecessary. You can still do a lot to protect yourself and ensure that you aren't damaging the trademark someone else has worked hard to build. There is no single test that determines trademark infringement, and these should be taken as a guideline to understand what prosecuting attorneys will be researching to make a case against you.