To prove trademark infringement under the Lanham Act, a plaintiff must first show that it has developed a protectable right in a trademark. The plaintiff must then show that the defendant is using a confusingly similar mark in such a way that it creates a likelihood of confusion, mistake, and/or deception among the consuming public.
The courts have established a number of factors to determine if there is a likelihood of confusion:
- The strength of the mark;
- The degree of similarity between the marks;
- The geographic and market proximity of the products;
- The likelihood the prior owner may one day enter the market of the subsequent owner;
- Actual consumer confusion;
- Defendant’s bad faith in adopting the mark;
- Quality of the defendant’s product; and
- The sophistication of the buyers.
The most common form of relief granted to a successful plaintiff in a trademark infringement suit is an injunction against further infringement. If the mark was federally registered, attorneys’ fees may also be available. Monetary damages are available under the Lanham Act, but are not commonly awarded.
Some considerations in deciding whether to file a federal trademark suit are:
- Whether the plaintiffs can present evidence of actual confusion;
- Whether the offending user is using the mark to sell similar goods;
- Whether defendant used the mark in commerce; and
- Whether the mark was federally registered.