The test to determine whether a trademark is protectable under federal law is the likelihood of consumer confusion as to the source of the allegedly infringing product.
As to the first factor, a mark cannot be considered distinctive if it is found pervasively throughout the public domain.
As to the second factor, a mark cannot be said to have obtained strength in the marketplace where the field is crowded with similar types of marks. Evidence of third-party use bears on the strength or weakness of a mark.
Third parties using similar marks is evidence of weakness. Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights.
It is also critical to examine whether, at any time, the claimant misidentified its mark as protected by federal registration. Placing the (r) symbol next to an unregistered logo by and of itself violates the clean hands doctrine and may preclude any injunction against infringement. It does not matter whether Plaintiff’s improper use of the symbol was intentional or merely negligent; either way, misuse of the symbol should preclude any request for injunction.
Claimant must also show that defendant (1) without permission, copied, reproduced, or imitated the plaintiff's (2) registered trademark in commerce (3) as part of the sale or distribution of goods or services (4) and that such use is likely to cause confusion between the two marks. The Court must specifically make a finding of more than a mere “possibility” of confusion.
Establishing that a trademark has been violated is often more difficult than a claimant may imagine, particularly where the alleged violator mounts a vigorous defense. Of course every case is different and requires individualized analysis.
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