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.

Making this determination pivots on two factors:

  • The mark’s inherent distinctiveness (i.e., whether it is generic, descriptive, suggestive, arbitrary, or fanciful); and

  • It's acquired distinctiveness, or strength in the marketplace.

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.


The following factors are used when to determine whether there is a likelihood of confusion between competing trademarks:

  • The strength of the plaintiff's mark;

  • The similarity of plaintiff's and defendant’s marks; 

  • The competitive proximity of their products;

  • The likelihood that plaintiff will “bridge the gap” and offer a similar product;

  • Actual confusion between products;

  • Defendant's good faith;

  • The quality of defendant's product as compared to plaintiff's; and

  • The sophistication of the purchasers.

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.

  • If the mark is protectable, and was never misrepresented as federally registered when it was not, then to enjoin use of a mark, the claimant must establish irreparable harm and either

  • A likelihood of success on the merits; or

  • Sufficiently serious questions going to the merits and a balance of hardships tipping decidedly in its favor.

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.

Please feel free to contact us to learn more about our litigation services.

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