A Quick Guide to Trademark Infringement and Polaroid Factors

Trademark infringement cases of depend on certain "polaroid factors" which help judges decide whether there is a likelihood of confusion between two brands.
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by | Last updated Jul 16, 2020 | Published on Feb 6, 2019 | Intellectual Property Law

When you register a trademark in a particular goods or services class, you’re claiming sole ownership over that mark’s use in your industry.

If another person uses a similar or identical mark and uses it to make money, they might be infringing on your trademark.

However, trademark infringement cases are rarely cut and dry.

In this article, we’ll go over the basics of how trademark infringement works.

However, if you are involved in a trademark dispute you should always contact an intellectual property lawyer immediately.

Every trademark dispute is different, and no article can ever fully prepare you for the complicated details of a specific case.

What is Trademark Infringement?

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Trademark infringement is defined in sections §1114 and §1125 of the Lanham Act.

The United States Patent and Trademark Office (USPTO) defines trademark infringement according to three rules:

  • Trademark infringement is the unauthorized use of a valid, registered trademark or colorable imitation of the mark. Thus, if the user has permission from the trademark holder (especially in the form of a contract, typically called a license), it’s not infringement.
  • The mark must be used on, or in connection with, goods and/or services in commerce. As we’ll talk about, the type of good or service matters a great deal as well. It’s very difficult to infringe on trademarks in a completely different industry or type of business.
  • The mark must be used in a way that is likely to cause confusion among customers. Many trademark infringement cases come down to determining this “likelihood of confusion.”

If a case fulfills all three of these requirements, the court is likely to rule that the use of the mark is infringement.

This ruling can have significant consequences: not only can the infringing party lose access to their trademark, but they may also have to pay damages in proportion to the holder’s lost revenue.

What Makes a Trademark Valid?

Of course, for trademark infringement to have taken place, the trademark itself must be valid. However, this doesn’t necessarily mean “registered.”

In the United States, even common law trademarks receive certain protections under the law.

Registered or not, in order to be legally recognized, a trademark must be both “distinctive” and used in commerce.

A distinctive trademark is one which is neither merely descriptive, vague, or generic.

Made-up words or acronyms (IKEA, for example) are great examples of distinctive trademarks.

Similarly, trademarks have to be used in commerce in order to be valid. If you fail to use a mark for a certain amount of time (if you’ve yet to use it in the course of your business) the trademark may not be valid.

Trademark Classes and Infringement

As mentioned above, a trademark must be connected to a particular form of goods and/or services.

When it comes to registered trademarks, this means falling into one or more of the USPTO’s 45 trademark classes.

Normally, the use of a particular trademark will only count as infringement within the same class of good or service.

For this reason, you don’t need to be worried about facing infringement lawsuits from companies working in unrelated areas.

In fact, two different companies can have exactly the same name if they work in two separate industries.

For example, this is why Delta Airlines and Delta Faucets can exist at the same time, since they don’t operate in confusingly similar markets (and are registered under different trademark classes).

Likelihood of Confusion

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Ultimately, the most important question in any trademark infringement case is whether or not there is a likelihood of confusion between the two brands.

In other words, “how likely is it that the average person will confuse two goods or services based solely on their trademarks?”

If the answer is “not likely at all,” then you can probably assume that no infringement has taken place.

Courts reviewing trademark infringement use a similar method, but on a much larger and more complex scale.

These questions and tests are generally called “Polaroid Factors,” and stem from the 1961 Case Polaroid Corp. Vs. Polarad Elecs. Corp.

Polaroid factors apply in virtually all infringement disputes.

The 8 Polaroid Factors Used in Trademark Infringement Cases

The eight Polaroid Factors used in most trademark infringement cases are as follows:

  • The Strength of the Registered Mark – The court will usually rule against a vague or merely descriptive mark when adjudicating a trademark infringement case.
  • Similarities Between the Marks – Obviously, there has to be a resemblance between the two marks for trademark infringement to have taken place.
  • Competitive Proximity – The products must be competing for the same customers. With the advent of online business, this factor has become harder to determine.
  • Likelihood of Competitive Proximity – The chance that the registered owner will bridge the gap and enter the same market as the alleged infringer. Even if trademarks are not used in connection with the exact same goods and/or services, if the court finds the defendant’s goods/services to be a reasonable extension of the plaintiff’s, then the court may find that there is a likelihood of confusion.
  • Actual Confusion on the Part of Purchasers – If the owner of the registered mark can bring forth evidence that confusion has taken place, their case will become much stronger.
  • The Alleged Infringer’s Good Faith – Unintentional resemblance is less likely to result in a ruling against the alleged infringer.
  • Relative Quality of the Alleged Infringer’s Product – If one product is noticeably inferior to the other, the judge might take this fact into account.
  • The Sophistication of the Buyers in the Relevant Market – Products marketed to experts are less likely to result in confusion, so the chance of infringement is less likely.

Keep in mind that the Polaroid factors are only a few commonly used methods for determining infringement.

The factors that courts use, and the importance they assign them may vary a little from case to case.

Resolving Trademark Infringement Cases

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In most cases, the goal of a trademark infringement case is to stop the infringing behavior by obtaining an injunction.

This is essentially a legal document that prohibits the infringing business from using the mark.

However, while less common, it is possible for the registered owner of a trademark to also receive monetary damages. 

Most of the time, the court will only assign damages in cases of intentional trademark infringement that caused provable damages.

If the court does assign damages, they will do so according to Section 1117 of the Lanham Act.

Under the Lanham Act, the court will consider the following factors when assigning damages:

  • The alleged infringer’s profits.
  • The plaintiff’s actual loss of profit.
  • Recovery costs.
  • In some cases, the plaintiff’s attorney’s fee and other court costs.

Trademark Infringement and Social Media

In recent years, several infringement cases have arisen from the illicit use of registered names and logos on social media.

Unfortunately, many of the laws surrounding trademark infringement have yet to catch up to modern technology.

In particular, it is extremely difficult to pursue a trademark infringement case against anonymous individuals over the internet.

In such cases, the best option is typically to contact the operators of the social media platform directly.

Virtually all social media platforms have explicit procedures to deal with the spread of infringing content.

Most will require proof that you are the trademark holder, as well as an explanation of how the content in question is infringing.

Nevertheless, not every online use of a registered brand is infringement.

For example, non-commercial parody is generally protected under U.S. law, as it will often count as a fair use of the name, logo, or trade dress being parodied.

Ultimately, there is a fine line between legitimate trademark usage and trademark infringement.

However, remember that receiving monetary benefit from the use of someone else’s trademark is almost always unacceptable.

If this appears to be happening, and the social media platform in question refuses to act, consider speaking to a lawyer.

Conclusion

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Trademark infringement is a serious concern for many businesses. However, as we’ve seen, trademark law is complicated and not always intuitive.

For this reason, you should never hesitate to consult an attorney when issues with trademarks arise.

No matter which side of the dispute you are on, an experienced intellectual property lawyer can help you understand and deal with your situation in a way that doesn’t hurt your business.

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Jacob Tingen

Jacob graduated from the University of Richmond School of Law and was accepted to the Virginia Bar in 2012. Less than 30 days after being admitted to the bar, Jacob launched his own legal practice. Read More.

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