Are you infringing on someone’s trademark?

post

Most times, when I talk about copycats + thieves I do it from the perspective of you being the do-gooder who needs to protect their brand.

But, in reality, you may be the offender. You may not even know it. You, dear genius, may be unknowingly infringing on someone’s trademark.

Everyone makes mistakes. But, this is a huge faux pas that can cost you a pretty penny…

So, let’s reel you in now.

Let’s talk about what actually constitutes trademark infringement. For purposes of this post, let’s limit our discussion of trademarks to brand names, slogans and logos. Ok? Trademark infringement does not simply mean that you’ve actually copied someone else’s trademark but it can also happen because the trademark you’re using is so similar to someone else’s that the public is likely to confuse the two as coming from the same owner.

For example, my trademark is Creative Genius Law. Let’s say that a few years after I’d been using my trademark someone else launched a brand named, “Creative Genius Legal Classes.” This is a situation where there’s not a word-for-word duplication of my trademark. BUT, they are so similar that people would reasonably assume that the two brands were affiliated (the legal term here is “likelihood of confusion”).

This is a prime example of trademark infringement (and how you may accidentally be infringing on someone’s trademark).

Trademark infringement occurs when one person uses a substantially similar or identical trademark of an existing trademark, without authorization, and it creates a likelihood of confusion for the consumer.

These factors are weighed to determine whether there is a likelihood of confusion (and therefore infringement) with another trademark:

  • The two trademarks create a similar impression (based on appearance, phonetics, underlying meaning or the overall commercial impression)
  • the similarity of the goods and services offered by the two trademarks (including the marketing and distribution channels for the goods)
  • the strength of the original trademark (hint: I already blogged about “weak” trademarks)
  • the intent of the second person adopting the trademark (defendant)
  • evidence that consumers have actually experienced confusion
  • the degree of care likely to be exercised by the consumer (i.e. are both products/services an impulse buy or does one require more forethought than the other)

The common situations where I’ve seen unintentional trademark infringement occur among creative entrepreneurs is when a business owner has been “inspired” by someone else in their industry. They don’t copy the other person’s brand but develop something pretty damn close without realizing that they’ve crossed into forbidden territory.

Let’s dispel the myths.

Again, people mistakenly believe that trademark infringement exists when you’ve copied someone else’s trademark but now you know the real deal.

People also believe that you have to actually be aware of the other person’s trademark for it to be infringement. Also, not true. Trademark infringement can happen when there is actual or constructive notice that someone else owned the trademark. Constructive means that you may not have actually known that it existed but you should have known. For example, maybe you’ve never laid eyes on the trademark owner’s website. But if they have a federal trademark, registered with United States Patent and Trademark Office) then you should have known that they existed because their ownership is a part of the public record.

Does this shed light on things for you? Are you actually infringing on someone’s trademark?

My goal with this post is for you to think about these things as you create new logos, brand names, and slogans for your business. If this post raised some flags for you then that’s a good thing. You can go back and rework some things in your brand now instead of having to worry about that later. I give more good intel on this stuff in my free masterclass Protect Your Brand in Cyberspace.

PLUS, if you intend to make an asset out of your brand elements (which should definitely be your goal) and register them as federal trademarks in the future, you’ll need to have these issues handled. Likelihood of confusion is one of the huge reasons that trademark applications get rejected, and I don’t want that to be you.

On the flip side, by the time you register your trademark with the USPTO, you’ll have had a trademark clearance search done and gone through an extensive review with the examining attorneys at USPTO. You’ll know that you aren’t infringing on someone else’s trademark and that you are using a trademark you can legally call your own.

You have the intel. It’s time for you to put it to use.

 

Leave a reply