No. It is not necessary to prove likelihood of confusion to prevail on a trademark dilution claim. The harm caused by dilution is loss of distinctiveness or damage to reputation, not consumer confusion.
Is it necessary to prove likeilihood of confusion to succeed on a dilution claim? Read More »
Courts consider a variety of factors to determine whether a likelihood of confusion exists. Similarity of the marks and the similarity or relatedness of the goods or services are the most important factors. Courts also look at things like the similarity of marketing channels, the strength (distinctiveness) of the original mark, intent to deceive, actual
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Trademark infringement is the unauthorized use of a trademark in a way that is likely to confuse consumers about the source of a product or service. It occurs when an identical or similar mark is used to market a product or service that is identical, similar, or related to the product or service for which
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Yes. The USPTO can cancel a registration for a particular class or classes of goods or services while leaving the registration intact for another class or classes of goods or services. The Trademark Modernization Act allows the USPTO to expunge or reexamine specific classes of claimed use that lack evidence of actual and continuing use
A “live” trademark registration or application is one that is active (on either the Principal or Supplemental Register), or pending (one that has been applied for and is undergoing examination.) A “dead” trademark registration or application for registration is one that has been abandoned, withdrawn, or cancelled. The distinction is important because the USPTO will
Trademark searches are conducted to ensure that a brand or proposed trademark is not confusingly similar to an existing one. Ideally, a trademark search should be conducted prior to investing in developing a brand, or spending money on marketing and legal fees. A competently conducted trademark search can also reduce the risk of a cease-and-desist
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A trademark clearance search is a check to see if a particular brand name, logo, slogan or other source identifier is already being used as a trademark. It is typically conducted prior to applying to register a trademark, to ensure that time and expense are not wasted trying to register a mark that is confusingly
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Yes. The maxim, “Use it or lose it ” applies to trademark law. Trademark rights continue only so long as all five criteria for the existence of a valid trademark continue to be met. Those criteria are: (1) a word, symbol or other thing; (2) use in commerce; (3) functions as an identifier of the
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Possibly, but not necessarily. Using another company’s trademark as a brand identifier for a different kind of product or service is usually permissible because it is not likely to confuse consumers about the source of the product or service. Consumers generally do not assume that a business sells completely different kinds of products and services.
Using the same or a similar trademark for similar products or services may be likely to confuse consumers about the source of the products or services even if they are technically different kinds of products or services, so this kind of use may result in liability for trademark infringement. Likelihood of confusion may exist if
