What are the Elements of a Trademark Infringement Claim?
In order to prevail on a trademark infringement claim, one must prove two elements:
that one possesses a legally protectable trademark; and
the defendant’s use of the same or similar mark creates a likelihood of confusion as to source, affiliation, or sponsorship.
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Under the Lanham Act, infringement exists if a person uses (a) any reproduction, counterfeit, copy, or colorable imitation of a mark; (b) without the registrant's consent; (c) in commerce; (d) in connection with the sale, offering for sale, distribution, or advertising of any goods; (e) where such use is likely to cause confusion, or to cause mistake or to deceive. Importantly, the defendant’s intent (or lack thereof) will not absolve liability for trademark infringement.
To be legally protectable under the first element, a mark must either be inherently distinctive or have acquired distinctiveness. Acquired distinctiveness is a factual determination based on at least five years’ use in commerce and other key considerations including advertising and marketing efforts. The registration of marks with the USPTO is prima facie evidence that the marks are inherently distinctive. However, this presumption of legal validity accorded to a federally registered trademark may be rebutted by a contrary showing that the mark is not inherently distinctive.
As to the second factor, a likelihood of confusion, courts in the Fifth Circuit use a non-exhaustive list of factors known as “digits of confusion.” Those digits are: (1) the type of trademark; (2) mark similarity; (3) product similarity; (4) outlet and purchaser identity; (5) advertising media identity; (6) defendant's intent; (7) actual confusion; and (8) care exercised by potential purchasers. The list is intended to be flexible and no one “digit” is dispositive and a determination of a likelihood of confusion need not be supported by a majority of the factors.
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This article is provided for informational purposes only and does not constitute legal advice. For guidance on specific legal matters under federal, state, or local laws, please consult with our IP Lawyers.
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