Welcome back to our course on protecting business innovations via trademark.

We're going to be talking today about trademark infringement,

which means violation.

Someone violated your trademark, and you want to sue them.

So how do you prove it?

You say that someone violated your trademark, they say they didn't.

How does a judge decide?

Well, the first thing he's going to look at is, how similar are the marks?

How much do your marks look like each other?

Then he's going to ask, how similar are the goods?

If the goods are very different, then even if the marks are the same,

you may say there's no chance of confusion.

Then you're going to look at the character of the markets.

Where are the goods sold?

Is it likely that consumers would be confused for this type of market?

Some markets, people are going to be in a hurry, and

they're not going to pay a lot of attention.

Some markets, people will be very, very careful and diligent.

And they will know, even subtle differences between goods, they will know.

So the infringement likelihood is much lower.

And then you'll look at,

is there any evidence that people actually were confused?

So these are the factors that we'll look at in infringements.

How similar are the marks?

How similar are the goods or services?

What's the character of the marketplace in which they are sold?

And what's the evidence that someone was actually confused or might be confused?

When we look at similarity of the marks, this first point,

we look at more than just the name.

Remember, trademark can be design, it can be sounds, it can be colors,

it could be style, it could be many different things.

And so we'll look at the marks overall, all aspects of the marks.

We'll look at, how similar are they?

We'll look at homonyms of words, words like Bare Essentials versus Angry Bear.

The word bear means the same thing, but it also could be aspirin.

And so if you had Bayer Aspirin, that would be similar sounds with

different meanings, but B-A-Y-E-R is a brand of aspirin.

But if you had Bear Aspirin with a big angry black bear on it,

that sounds the same, but it's got a different meaning.

Or you could say similar sounds with different meanings, like style and dial.

Those might be too close, if it's the same type of product.

So that's where you look in and say,

consumers could be confused between style and dial in certain contexts,

when the products are similar or other aspects of the trademark are similar.

Now, you don't look at each of these individually.

You look at them together, and you look at the total effect.

You could look at individual elements and say the sound is the same or

the color is overlapping.

And the color is our trademark color, something special to our product.

That may be enough, but

you also may look at the total effect of all of these elements combined.

When you think about similarity of marks, an example would be the red-sole shoes,

which is a color red that is trademarked for soles of shoes.

In European court,

there was a court case fought with shoes that were completely red.

And the court said, you have a trademark on red-soled shoes.

We will grant that and acknowledge that, and that is your mark.

It's very well protected.

But if a brand of shoes is entirely red, the same color for

the soles and the tops, that's not likely to be confused with your shoe.

And so they said, if a shoe is totally red, that's okay.

The soles can be the same color as the top.

Your shoe is a red sole with a different color top,

with a fashion sense to it or high price to it.

Crocs that are all red are not likely to be confused by consumers as,

would that really be this designer's shoe or not, because it's red sole.

No, chance of confusion is low.

In other contexts, fiberglass insulation has been very effective

in protecting the pink color at Owen Corning's fiberglass.

If you see fiberglass that's pink, that's Owens Corning.

That is their trademark, that's their brand.

Any other color, somebody else.

Pink, our color, our company, our brand.

You are pink, that's enough, you're guilty.

Similarity of goods and services also is a factor.

And you look at the combination of the effect of the marks and

the goods or services.

If the goods or services are very different, even if the marks are the same,

or very close, you may say, chance of confusion,

very low, overlap in trademark, very low.

So when you look at how similar are the marks and

the function, you look at Motorola versus Marmot.

And say, these are pretty similar M's.

They look pretty similar as logos.

They're both red, they both look kind of like mountains or M's.

But I'm not likely to confuse a mobile phone with outdoor clothing.

The goods are very different.

So the marks are similar, but the functions or goods are different.

So you look at the combined effect.

Character of markets is also a consideration.

You look at the context analysis of how customers are buying.

This is online, this is face to face.

This is a department store, this is a car dealer.

You'll look at where are you buying something, how are you buying something,

and is this likely to lead to confusion between products?

One example of character of markets is, when you look at supermarkets,

the protection of trademark tends to be pretty high.

Because the argument is, consumers are quick to buy things.

They're not spending a lot of time examining each product.

And so even if you have a product that's just a little bit similar,

it may be enough to confuse consumers.

In a car dealership,

your overlap would have to be stronger before trademark would come into play.

Because, even a little bit similar, you would say, look, I mean,

all cars look a little similar, or many cars look a little similar.

And I know the difference between a Honda and a Toyota.

And I know which dealer I'm in, so I'm not likely to be confused.

But if the similarities are very strong, I still have trademark rights.

The same applies to wholesale versus retail, as I'm less protected

in a wholesale environment than I am in a retail environment.

When I go to buy a chair at IKEA and I have two chairs that look similar, one

is much cheaper than the other, I might get confused between the two products.

And this is a problem for consumers.

I didn't know that I was getting the cheaper brand that is a knock-off.

And therefore, that's a trademark violation, you can confuse consumers.

When I'm in a wholesale environment, I probably know the difference.

I'm probably looking and saying, well, this one's cheaper, but it's not as good

a material, the warranty's not as good, so I make a trade-off.

Wholesale buyer, less protected than retail buyer.

Because wholesale buyer are likely to be paying more attention and

more careful when making comparisons.

Evidence of actual confusion will look at whether buyers were actually confused

as to brands or origin of a product.

And secondary confusion is, the buyer wasn't confused, but

someone observing the product afterward was confused.

They see the logo on the back of your jeans, and

they think, that looks like a designer brand logo.

You know that you bought it at a discount store.

You know that it wasn't the designer brand.

It's kind of a copy cat, you know that.

You didn't pay for the designer brand, but the logo looks close.

So you're trying to confuse your friends.

That's secondary confusion.

Proof of confusion also can be submitted as evidence of confusion,

which is testimony, people were confused,

or a survey of people might have been confused if faced with this choice.

So how do we prove infringement?

We look at similarity of the marks.

We look at similarity of the goods and services.

We look at the character of the markets and how much care or

consideration a buyer may pay when they're buying a product.

And finally, we look at any evidence you may have to support the argument

that consumers actually were confused, either primarily.

Or as a secondary consideration of confusion,

that you confused your friends, and that hurt the brand.

Thank you. [MUSIC]

3.2 Trademark Infringement

Protecting Business Innovations via Trademark

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