Trademark Infringement

November 9, 2021

Trademark infringement is the unauthorized use of trademarks or service marks with or in connection to goods and/or services in a fashion that is likely confusion, deception, or mistake regarding the source of the goods/or services.

Infringement is when another party uses a similar trademark that could confuse. It isn’t easy to prove who first used the mark if neither party has a trademark. To avoid losing the chance to trademark their business, they must file a trademark application as soon as possible.

Trademark law ensures that a trademark owner has the exclusive right to use their trademark whenever another person uses it. As a federal issue, Trademark law is covered by the Lanham Act. A violation of the Lanham Act can be established for any registered or unregistered trademark. The plaintiff must show that (1) it has a valid mark that is legally protected; (2) it owns it; and (3) it uses the mark to identify goods and services. A plaintiff must prove that it owns a valid trademark and that defendant used the mark in commerce without the plaintiff’s consent. The plaintiff must also prove that the defendant’s use is likely to confuse the plaintiff’s affiliation, connection, or association with the plaintiff or the origin, sponsorship, or approval of the defendant’s goods, services, or commercial activities by the plaintiff. To establish a trademark infringement case, the plaintiff must prove that “use,” “in commerce,” and “likelihood to confusion” has been tampered with.


An alleged infringer cannot “use” a trademark without establishing a threshold. Many activities can be “in commerce” or create confusion. But, these activities don’t violate the Lanham Act if they aren’t associated with a trademark. The use requirement serves an important function in that it prevents trademark holders from asserting a general right to control language. For trademark infringement purposes, “use” does not mean that a seller or producer is trying to capitalize upon a competitor’s brand recognition. While “pop-ups” on the Internet or product placement in retail shops may be objectionable, such uses would not violate The Lanham Act.

“In commerce”

To establish a claim under the Lanham Act, the statutory requirement that an alleged trademark infringing use be “in commerce” is derived from trademark law’s foundation in the congressional power regulating interstate commerce. Accordingly, the plaintiff must show that the allegedly infringing activities significantly affected interstate commerce to satisfy the “in commerce” requirement. Accordingly, the following activities are eligible to meet the “in commerce” requirement:

  1. Advertising by the alleged infringer in multiple states
  2. Interstate movement of goods bearing infringing marks from manufacturer to seller.
  3. Sending a product to a different state for the purpose registration of a trademark
  4. Advertisement in newspapers with interstate distribution, billboards at interstate highways or radio and television stations that broadcast within interstate ranges

“Likelihood to confusion”

The central focus of trademark infringement claims is “Likelihood to confusion.” When consumers see the allegedly infringing marks, they will likely assume that the product/service it represents is associated with the source of another product/service identified with a similar trademark; there is a likelihood of confusion. Two standards conduct the likelihood of confusion analysis. First, they will determine whether the accused item is directly competitors with the trademarked product.

  1. If the accused item directly competitors with the trademarked article in the goods and/or services provided:
    • The court will seldom look beyond the mark. Infringement will typically be found if two identical marks can cause consumer confusion.
  2. If the goods are totally unrelated to the services or goods which were provided:
    • The court will generally find that confusion cannot be established and there is no infringement.

If the goods involved are related but not directly competitive for sales, the likelihood analysis of confusion becomes more complex. Lapp testing is one of many factors that must be considered when determining if there is likely confusion between marks. These factors can be used to determine the likelihood of confusion.

  1. The trademark owner’s strength;
  2. The degree of similarity in the marks of the trademark owners and those allegedly infringing;
  3. Actual consumer confusion evidence
  4. Marketing channels used
  5. The nature of the goods being purchased and the care required.
  6. The intent of the alleged infringer in selecting the mark
  7. There are other facts that show that the public expects the trademark proprietor to make a product in the infringer’s market or to expand into it.