Trademark infringement suits generally involve claims that the bearer of an allegedly offending similar mark is creating the likelihood of customer confusion over competing products, diluting the distinctiveness and value of an existing mark or counterfeiting an existing mark with an identical “knock-off” mark.
Likelihood of confusion is shown by proof that the allegedly offending mark is causing “probable” confusion among consumers, such that buyers in the relevant market are mistaking the defendant’s name or logo for the plaintiff’s trademark. Proof that confusion among consumers is only possible will not suffice to establish an infringement claim. On the other hand, the evidence need not rise to the level of actual confusion. Instead, courts will evaluate claims of customer confusion on a case-by-case basis in light of the following factors: (1) the similarity of the marks; (2) the similarity of the products; (3) the degree in which the markets for the competing products overlap; (4) the degree of care likely to be exercised by consumers; (5) the strength of the marks; (6) the amount of actual confusion; and (7) wrongful intent.
Trademark dilution is shown by proof that the defendant’s use of an allegedly offending mark is likely to tarnish, degrade, or lessen the individuality, distinctiveness, or consumer impact of the plaintiff’s mark. Trademark dilution suits seek to protect the advertising value of particularly strong and wellrecognized trade symbols by stopping other businesses from using similar symbols to promote their products, even though no consumer confusion affects actual results and even though the rivals’ products are not in direct competition with each other. Thus, Polaroid could successfully prevent an Illinois company from using the word “polaroid” in marketing its refrigerator and heating installation business (see Polaroid Corp. v. Polaroid, Inc., 319 F.2d 830 [7th Cir. 1963]).
The Lanham Act defines a counterfeit mark as a “spurious mark that is identical with, or substantially indistinguishable from, a registered mark” (see 15 U.S.C.A. § 1127). All counterfeit marks are infringements, unless the offending mark is associated with a type of product or service that is wholly different from the plaintiff’s mark. Individuals who intentionally traffic in counterfeit trademarks or attempt to traffic in them also face criminal punishment, including fines up to $2 million, imprisonment up to ten years, or both (see 18 USCA § 2320).
Defendants can raise several defenses against infringement suits, many of which are addressed briefly above. First, a defendant can claim that the plaintiff’s mark is generic and thus not of sufficiently distinctive quality to qualify for federal trademark protection. Second, a defendant can offer proof that the plaintiff abandoned its trademark and thus is no longer the owner of the mark. Third, a defendant can charge that it had first use of a mark and thus that the plaintiff is actually engaging in infringement of the defendant’s mark. Fourth, a defendant can claim that it is making “fair use” of the defendant’s mark, meaning essentially that the defendant is using the plaintiff’s mark for non-commercial purposes, as when a teacher uses a mark for the educational benefit of students. Finally, the defendant may plead that the plaintiff has unclean hands, meaning the plaintiff has acted in an illegal, unfair, or deceptive manner that should prevent the court from enforcing the plaintiff’s trademark.