MightyRecruiterTrademarks are designed to create a brand and establish an association with customers. If two trademarks are too similar, confusion can be caused, which leads to several problems. In cases like this, the entity that held the mark first is referred to as the senior user while the infringing party is referred to as the junior user. Not only does confusion among trademarks take business away from the senior user, customers may associate the negative attributes of the junior company with the senior company. For example, if a customer mistakenly purchases the junior’s product and it breaks, it may take all future business away for the original product, which is of higher quality, as well as damaging the senior’s reputation. On the other hand, sometimes distinct marks can be accused of being too similar by the senior user, even if they are determined to be different enough. The factors taken into consideration when dealing with an infringement case are explained below, as well as what should be done if you are involved in such a case.
What to Do
First of all, regardless of whether your trademark is the one being infringed upon or you are being accused of infringement, the first thing you should do is find a trademark lawyer. Consulting on what actions to take will greatly benefit your case. In nearly every trademark dispute case, it comes down to proving the likelihood of confusion. You should review the factors used to determine how similar two marks are so you can prove your mark is the same or different from any other mark.
Determining Factors
The factors used in trademark infringement cases came from the 1961 case Polaroid Corp. v. Polarad Elecs. Corp. For this reason, these factors are frequently referred to as the Polaroid Factors. It is important to realize that these are not laws or immovable rules, but rather a set of guiding concepts. They are used differently at different times and locations. Each dispute is unique and treated individually. The Polaroid Factors are:
- Similarity of the Marks – If two marks are similar, it is easier for a typical customer to confuse them. Every aspect of trademarks is taken into consideration when determining their similarity, including appearance, pronunciation, association, connotation, and commercial implications. This is usually the most significant factor.
- Similarity of the Products – Successful claims of ownership nearly always have to have similar products or services. Even if marks are similar, if each is in completely different fields or industries, infringement claims are frequently overturned. However, sometimes cases can still be successful if the marks are nearly identical, despite differing products.
- Strength of the Senior Mark – The stronger the mark of the senior user, the more likely confusion is. Strong trademarks are defined as being abstract; that is, not describing the product. Google’s trademark is strong, whereas Bed, Bath, & Beyond is weak. The senior user’s claims are made more effective if the trademark is strong.
- Actual Confusion – Providing evidence of actual confusion is the strongest claim that can be made. It is best to prove that average customers can be confused, rather than edge cases.
- Chance of Expansion by the Senior User – If the senior and junior have different products, an infringement claim can still be made if the senior can reasonable by expected to expand into the junior user’s field.
- The Junior User’s Intent – Some trademarks are made specifically to benefit from confusion with a superior brand. If this is the case, a very strong case can be made against the junior user.
- Quality of the Junior User’s Product – The more negative qualities the junior user’s product or brand has, the more damage can be done to the senior and the stronger the case is.
- Sophistication of Customers – While the definition of sophistication is vague, the less sophisticated the targeted customer base, the more likely confusion is.
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The content on our website is only meant to provide general information and is not legal advice. We make our best efforts to make sure the information is accurate, but we cannot guarantee it. Do not rely on the content as legal advice. For assistance with legal problems or for a legal inquiry please contact you attorney.