Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the licence). Infringement may occur when one party, the "infringer", uses a trademark which is identical or confusingly similar to a trademark owned by another party, especially in relation to products or services which are identical or similar to the products or services which the registration covers. An owner of a trademark may commence civil legal proceedings against a party which infringes its registered trademark. In the United States, the Trademark Counterfeiting Act of 1984 criminalized the intentional trade in counterfeit goods and services.Irina D. Manta Spring 2011 The Puzzle of Criminal Sanctions for Intellectual Property Infringement Harvard Journal of Law & Technology 24(2):469-518
If the respective marks and products or services are entirely dissimilar, trademark infringement may still be established if the registered mark is well known pursuant to the Paris Convention. In the United States, a cause of action for use of a mark for such dissimilar services is called trademark dilution.
In some jurisdictions a party other than the owner (e.g., a licensee) may be able to pursue trademark infringement proceedings against an infringer if the owner fails to do so.
Likelihood of confusion Section 32 of the Lanham Act states that those who use similar or identical trademarks, products, or services, to those already registered with the USPTO in such a way as "likely to cause confusion, . . . cause mistake, or to deceive. . . shall be liable in a civil action by the registrant . . . ." Where the respective marks, products, or services are not identical, similarity will generally be assessed by reference to whether there is a likelihood of confusion that consumers will believe the products or services originated from the trademark owner.
Likelihood of confusion factors A typical likelihood of confusion test balances a variety of factors, none of which is dispositive on its own. While each jurisdiction uses a slightly different test, every test considers (1) whether and to what extent the alleged infringer intended to infringe on the senior user's valid trademark rights, (2) evidence of any consumer confusion, and (3) factors that speak to the economic relationship between the consuming public and the two marks, products, or services. +Circuit CourtIllustrative CasesLikelihood of Confusion Factors1st CircuitBoston Athletic Ass’n v. Sullivan, 867 F.2d 22, 29-34 (1st Cir. 1989) Keds Corp. v. Renee Int’l Trading Corp., 888 F.2d 215 (1st Cir. 1989) the similarity of the marks;Boston Athletic Ass'n v. Sullivan, 867 F.2d 22, 29 (1st Cir. 1989) the similarity of the goods; the relationship between the parties’ channels of trade; the relationship between the parties’ advertising; the classes of prospective purchasers; evidence of actual confusion; the defendant's intent in adopting its mark; and the strength of the plaintiff's mark.2nd CircuitPolaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961), cert. denied, 368 U.S. 820 (1961) Playtex Products, Inc. v. Georgia-Pacific Corp., 390 F.3d 158 (2d Cir. 2004) the strength of the plaintiff's mark Playtex Products, Inc. v. Georgia-Pacific Corp., 390 F.3d 158, 162 (2d Cir. 2004) the similarity of the parties' marks the proximity of the parties' marks in the marketplace the likelihood the plaintiff will "bridge the gap" between the products actual consumer confusion between the marks the defendant's intent in adopting its mark the quality of the defendant's product the sophistication of the relevant consumer group
These are often referred to as the "Polaroid" Factors.3rd CircuitInterpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983); KOS Pharmaceuticals, Inc. v. Andrx Corp., 369 F.3d 700 (3d Cir. 2004). the degree of similarity between the owner's mark and the alleged infringing mark;KOS Pharmaceuticals, Inc. v. Andrx Corp., 369 F.3d 700, 709 (3d Cir. 2004) the strength of the owner's mark; the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase; the length of time the defendant has used the mark without evidence of actual confusion arising; the intent of the defendant in adopting the mark; the evidence of actual confusion; whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media; the extent to which the targets of the parties’ sales efforts are the same; the relationship of the goods in the minds of consumers because of the similarity of function; and other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant's market, or that he is likely to expand into that market.
These are often referred to as the "Lapp" Factors.4th CircuitPizzeria Uno Corp. v. Temple, 747 F.2d 1522 (4th Cir. 1984); CareFirst of Maryland, Inc. v. First Care, P.C., 434 F.3d 263 (4th Cir. 2006).
However, Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455 (4th Cir. 1996) holds that courts may consider factors not included in Pizzaria Uno. the strength or distinctiveness of the mark;Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984) the similarity of the two marks; the similarity of the goods/services the marks identify; the similarity of the facilities the two parties use in their businesses; the similarity of the advertising used by the two parties; the defendant's intent; and actual confusion
These are often referred to as the "Pizzeria Uno" Factors.5th CircuitRoto-Rooter Corp. v. O’Neal, 513 F.2d 44, 45 (5th Cir. 1975); Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477 (5th Cir. 2004)
However, the court in Oreck Corp. v. U.S. Floor Systems, Inc., 803 F.2d 166 (5th Cir. 1986) held that courts should apply a test utilizing eight factors. the type of mark allegedly infringed;Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477, 484–85 (5th Cir. 2004) the similarity between the two marks;Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477, 485 (5th Cir. 2004) the similarity of the products or services; the identity of the retail outlets and purchasers; the identity of the advertising media used; the defendant's intent; and any evidence of actual confusion6th CircuitFrisch's Restaurants v. Elby's Big Boy, 670 F.2d 642 (6th Cir. 1982), cert. denied, 459 U.S. 916 (1982); AutoZone, Inc. v. Tandy Corp., 373 F.3d 786 (6th Cir. 2004) the strength of the plaintiff's mark;AutoZone, Inc. v. Tandy Corp., 373 F.3d 786, 792 (6th Cir. 2004) the relatedness of the goods or services offered by the parties; the similarity of the marks; any evidence of actual confusion; the marketing channels used by the parties; the probable degree of purchaser care and sophistication; the defendant's intent;AutoZone, Inc. v. Tandy Corp., 373 F.3d 786, 793 (6th Cir. 2004) and the likelihood of either party expanding its product line using the marks
These are often referred to as the "Frisch's" Factors.7th CircuitHelene Curtis Indus., Inc. v. Church & Dwight Co., 560 F.2d 1325, 1330 (7th Cir. 1977), cert. denied, 434 U.S. 1070 (1978); Sullivan v. CBS Corp., 385 F.3d 772 (7th Cir. 2004) the similarity of the marks;Sullivan v. CBS Corp., 385 F.3d 772, 776 (7th Cir. 2004) the similarity of the products; the area and manner of concurrent use; the degree of care likely to be used by consumers; the strength of the plaintiff's mark; evidence of actual confusion; the defendant's intent to palm off its goods as those of the plaintiff 8th CircuitSquirtCo v. Seven-Up Co., 628 F.2d 1086 (8th Cir. 1980); Frosty Treats Inc. v. Sony Computer Entm't Am., Inc., 426 F.3d 1001 (8th Cir. 2005) the strength of the owner's mark;Frosty Treats Inc. v. Sony Computer Entm't Am., Inc., 426 F.3d 1001, 1008 (8th Cir. 2005) the similarity between the owner's mark and the alleged infringer's mark; the degree to which the products compete with each other; he alleged infringer's intent to “pass off” its goods as those of the trademark owner; incidents of actual confusion; and the type of product, its costs, and conditions of purchase
These are often referred to as the "SquirtCo" Factors.9th CircuitAMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) the strength of the mark; the proximity of the goods; the similarity of the marks; the evidence of actual confusion; the marketing channels used; the type of goods and the degree of care likely to be exercised by the purchaser; the defendant's intent in selecting the mark; and the likelihood of expansion of the product lines.
These are often referred to as the "Sleekcraft" Factors.10th CircuitSally Beauty Co. v. Beautyco, Inc., 304 F.3d 964 (10th Cir. 2002) Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir. 2006) the degree of similarity between the marks;Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 972 (10th Cir. 2002) the intent of the alleged infringer in adopting its mark; evidence of actual confusion; the relation in the use and the manner of marketing between the goods or services marketed by the competing parties; the degree of care likely to be exercised by purchasers; and the strength or weakness of the marks 11th CircuitAmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th Cir. 1986) Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197 (11th Cir. 2004) the strength of the marks Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197, 1207 (11th Cir. 2004) the similarity of the marks the similarity of the products the similarity of retail outlets and purchasers the similarity of advertising media used; the defendant's intent; and actual confusion D.C. CircuitPartido Revolucionario Dominicano (PRD) Seccional Metropolitana de Washington-DC, Maryland y Virginia v. Partido Revolucionario Dominicano, Seccional de Maryland y Virginia, 312 F. Supp. 2d 1 (D.D.C. 2004) the strength of the plaintiff's mark;Partido Revolucionario Dominicano (PRD) Seccional Metropolitana de Washington-DC, Maryland y Virginia v. Partido Revolucionario Dominicano, Seccional de Maryland y Virginia, 312 F. Supp. 2d 1, 14 (D.D.C. 2004) the degree of similarity between the two marks; the proximity of the products; evidence of actual confusion; the defendants' purpose or reciprocal of good faith in adopting its own mark; the quality of defendants' product; and the sophistication of the buyers Federal CircuitIn re E. I. Du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369 (Fed. Cir. 2005) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression;In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973) the similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; the similarity or dissimilarity of established, likely-to-continue trade channels; the conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing; the fame of the prior mark (sales, advertising, length of use); the number and nature of similar marks in use on similar goods; the nature and extent of any actual confusion; the length of time during and conditions under which there has been concurrent use without evidence of actual confusion; the variety of goods on which a mark is or is not used (house mark, “family” mark, product mark);