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By Purple Fox Legal

June 8, 2022

When a trademark is registered in the United States, the owner is granted exclusive rights to use it nationwide. No other business can use that mark in commerce without subjecting themselves to consequences for trademark infringement. That’s because trademarks are used to keep companies unique, competitive, and identifiable to consumers. 

The point of a trademark is to distinguish one company’s goods and services from those of another company. Infringing on someone else’s trademark confuses things for consumers in the marketplace. That contradicts the purpose of trademark law, which is why there are hefty consequences for trademark infringement. 

This article explores the basics of trademark infringement and how it really works. This article also covers the possibility of trademark confusion and the different ways you can navigate trademark issues.

What is Trademark Infringement?

Once a trademark is used in commerce, it becomes the property of the business that created it. This is true whether a trademark is registered or not. However, when a trademark has been successfully registered with the U.S. Patent and Trademark Office (USPTO), the registration grants the trademark owner the exclusive right to use that trademark nationwide. 

The use of any mark (or an incredibly similar one) in commerce without permission or authorization from the owner is infringement. Again, this is true regardless of whether the trademark in question is registered or not.

Trademark infringement can lead to a wide range of different issues, including consumer deception, business confusion, and legal repercussions. Once trademark infringement has occurred, the owner can file a lawsuit against the infringing user to prevent any continued use and gain monetary damages. These consequences have the ability to bankrupt small businesses.

Trademark Law and the Likelihood of Confusion

It is important for a trademark to be unique and easily identifiable to your business. This is why the USPTO carefully reviews each application with scrutiny for compliance and distinctiveness. In fact, one of the most common reasons a trademark registration is denied is due to a “likelihood of confusion” that exists between the mark in the application and one that already exists. 

If there is a possibility of confusion, the USPTO will administer one of the most common trademark infringement tests using the 13 Du Pont Factors. 

The 13 Du Pont Factors

The 13 Du Pont Factors were developed to help identify the possibility of consumer confusion for similar trademarks. Applying the 13 Du Pont Factors is one of the best ways of knowing whether your trademark infringes on the intellectual property of someone else. 

These factors can also show if your trademark will be unique and distinctive from all the rest. The 13 Du Pont Factors are frequently used by the USPTO, courts, and business owners to help determine the likelihood of confusion for a trademark. The factors are:

1. Degree of similarity in appearance, connotation, sound, and strength (conceptual and commercial) between the marks

2. Degree of similarity between the nature of the goods and services offered under the marks (or the goods and services listed in the trademark registrations, if applicable)

3. Degree of similarity between the trade channels that have been established and are likely to continue

4. Consumer purchasing sophistication (impulse buying vs. careful purchasing)

5. The prior mark’s existing fame and recognition

6. The number and nature of similar marks in use on similar goods and services

7. The nature and extent of any actual confusion

8. The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.

9. The variety of goods on which a mark is or is not used.

10. The market interface that exists between the two marks

11. The extent of exclusivity granted to the prior mark

12. The extent of any potential consumer confusion

13. Any other evidence that consumer confusion between the marks is likely

Conducting a Trademark Clearance Search

When a trademark registration is rejected, the applicant should take time to go through the 13 Du Pont Factors to see where they might have gone wrong. However, this process can be costly, frustrating, and time-consuming. 

That’s why trademark applicants should always conduct a proper clearance search before submitting a trademark application. Some of the best ways to clear your trademark application are to:

• Consult with an Attorney
• Conduct a Search for Similar Marks
• Search Federal/State Databases
• Check with the USPTO
• Conduct a Common Law Trademark Search

“Lady A” Trademark Dispute

In June 2006, a band called Lady Antebellum got their start in Tennessee. Approximately 14 years later amid racial disputes and turmoil, the band changed its name, shortening it simply to “Lady A.” It didn’t seem like much of a big deal until singer Anita White (who had been performing under the name Lady A for more than two decades) stepped forward in opposition. 

The issue was, however, that Anita White did not hold a registered trademark for the “Lady A” name. Instead, she argued, common law trademark rights had been developed throughout the 20 years she went by that name. The disagreement sparked a 2-year long legal battle between the parties for the “Lady A” trademark, both of whom asserted that it was rightfully theirs. 

Thankfully, in February 2022, the stars were able to come to an agreement outside of the courts, and both lawsuits were dropped. While the exact terms of the agreement still aren’t clear, this case truly highlights the importance of conducting a clearance search and doing your research on a trademark before using it. 

Protecting Yourself from a Trademark Infringement Lawsuit

The truth is, there are literally millions of trademarks that exist, and navigating all of them can be difficult. This doesn’t take away from the importance or necessity of conducting a thorough trademark clearance search before registering one, though. In order to best protect your business from lawsuits in the future, it’s best to do the difficult work now. 

Consider reaching out to a trademark attorney to help streamline the process and take some of the difficulty from your shoulders. By hiring a professional, you ensure that everything from the clearance search to filling out your application is done correctly the first time.