It is clear that you cannot use someone else’s trademark to sell your own goods. But, how close can you get to using someone else’s trademark while still avoiding liability for trademark infringement? The short answer is: it depends.
Of course, it is important to note that even if you believe you would prevail at trial, that does not eliminate the cost, time, and headache of fighting such a battle. The closer your mark is to another’s trademark, the more likely it is that they will attempt to sue you for trademark infringement. The “best practice” is always to come up with a trademark that is not similar to your competitor’s mark.
Likelihood of Confusion:
A trademark does not need to be exact to be infringing. If the mark is substantially similar to an existing mark to the point that it could confuse consumers, then the mark may still be infringing. Actual confusion on the part of consumers is not required.
When determining if trademark infringement has occurred, the courts look at whether there is a likelihood that the consumer would be confused by the allegedly infringing trademark. The legal standard from the Lanham Trademark Act is whether resemblance of the new mark to the original mark is “likely to cause confusion, or to cause mistake, or to deceive.”[1] In other words, what is the chance that someone will see your mark and think your product is associated with the original?
Substantial Similarity:
There is no bright line to determine if there is a likelihood of confusion, and the courts examine various factors. The courts look at the mark as a whole, including not just the associated words but also the way it looks and the way it would sound when spoken.[2] In other words, it is not enough to avoid trademark infringement by simply changing the spelling of the brand name—“Cate Spaid” is likely too similar to “Kate Spade” to avoid infringement.
Related Products:
Another factor that goes into the analysis involves how similar the products are to each other. The more closely related the products are, the less similarity is needed to support a finding of infringement.[3] That, as always, comes back to how likely a person is to think that the potentially infringing product is connected in some way with the original.
In the “Cate Spaid” example above, if the “Cate Spaid” brand was trying to market purses or other fashion accessories, the courts could likely to find that there is infringement of the “Kate Spade” trademark. On the other hand, if “Cate Spaid” was selling small shovels for use in the garden, the courts might have a harder time saying that infringement exists. The maker of the “Cate Spaid” shovels could argue that consumers are not likely to believe that designer “Kate Spade” would be selling garden shovels.
Conclusion:
There is not a hard and fast rule for how similar a mark can be to the original before a court would find it is infringement. As such, it is the best practice to come up with original marks that will set you apart from other brands, and not try to capitalize on the good will another brand has already worked hard to develop.
If you find that someone may be infringing on your trademark, or if someone has accused you of such infringement, speak to the experienced trial attorneys at Goosmann Law Firm, PLC, in our Omaha, Sioux City, or Sioux Falls offices.
[1] The Lanham Trademark Act, 15 U.S.C. § 1114(1).
[2] SquirtCo. V. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980).
[3] Id.
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