Is using a brand similar to another company’s brand trademark infringement?

Is using a brand similar to another company’s brand trademark infringement?

When a company uses a symbol to distinguish its products from other products in the marketplace, that symbol is considered a trademark.  In the United States using a trademark automatically grants the trademark user some exclusive rights to the trademark.  A trademark user can further strengthen it’s right to the trademark by registering the trademark with the United States Patent and Trademark Office, but registration is not required.  Trademark law in the United States grants a trademark user the right to exclude other people from using the trademark on similar products.  When someone other than the trademark user sells products that bear the trademark, that is considered trademark infringement. Trademark infringement is the unauthorized use of a trademark on products in a manner that is likely to cause confusion, deception, or mistake about the source of the products.  A trademark user can stop trademark infringement by filing a lawsuit.

When a trademark is copied and placed on products, it is relatively easy to prove that consumers were confused by the counterfeit trademark.  But when the trademark is not copied exactly that makes it more difficult to prove that consumers were confused about the source of a product.

Take for instance the case Hanesbrands Inc. et al v. Maxima Apparel Corp. et al, 1:18-cv-01344 (S.D.N.Y.  Feb 14, 2018).  Hanesbrands sells athletic clothing using the trademark Champion.  The trademark is set in a specific font with half the letter C colored in.  Maxima recently started selling clothing with the phrase, Gangsta, Chapo, or Stacks written in a similar font and colored in a similar fashion.  Hanesbrands sued Maxima for trademark infringement.  To win the case, Hanesbrands will have to prove that there is a likelihood of confusion between its products and Maximas products.

The court will look at 9 factors to determine if there is a likelihood of confusion:

  1. Strength of the Senior Mark
  2. Relatedness of the Products
  3. Similarity of the Marks
  4. Evidence of Actual Confusion
  5. Marketing Channels Used
  6. The Degree of Purchaser Care
  7. The Intent of the Defendant in Selecting the Mark
  8. Likelihood of Expansion of the Product Lines
  9. The quality of the defendant’s products.

After analyzing these factors against the evidence presented by both parties the court will decide whether Maxima has infringed on the Hanesbrands’ trademark.  Without knowing what evidence will be presented at trial the outcome of the trial cannot be accurately predicted.  Also it is likely that Maxima will claim that their products parody the Champion trademark, which would excuse them from liability for trademark infringement.  We will keep you updated as we learn more about this case.

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