It is said that imitation is the most sincere form of flattery. However, imitating a competitor’s trademark can lead to harsh consequences. Alternatively, allowing a competitor to imitate your trademark can damage your business. It is important to understand basic concepts of trademark infringement to prevent infringing, or being infringed upon.
It is important to know that an unregistered trademark can receive protection for infringement purposes. To receive this protection, the symbols or words of the mark must be distinctive, or strong. In determining distinctiveness, or the strength of a mark, courts classify marks in four categories, from weakest to strongest: generic, descriptive, suggestive, and arbitrary or fanciful.
- Generic marks receive no protection. Generic marks or terms refer to the basic nature of the product, rather than the more individual characteristics. For example, aspirin has been held to be generic and unprotected.
- Descriptive marks identify a characteristic or quality of the good, such as color, order, and function. For descriptive marks to gain protection, they must develop secondary meaning. An example of secondary meaning is that the public, over time, begins to identify the mark as reflecting not only the product, but also the source of the product. An example is Vision Center in reference to a business offering glasses.
- Suggestive marks do more than describe the good; they suggest some particular characteristic of the good and require the consumer to exercise their imagination to figure out what the good is. An example is Coppertone regarding suntan products.
- Arbitrary or Fanciful marks bear no relationship to the products and receive full protection. For example, Kodak bears no relationship to cameras, and Ivory bears no relationship to soap.
After classifying a mark, a court will uses the “digits of confusion test” to determine if there is a likelihood of consumer confusion as to the source of the goods. The test examines (1) the type of mark allegedly infringed; (2) the similarity between the marks; (3) the similarity of the products and services; (4) the identity of retail outlets and purchasers; (5) the identify of media advertising used; (6) the defendant’s intent in using the mark; and (7) any evidence of actual confusion.
This process was explained in a clothing apparel trademark infringement suit. In the case, Saturdays Surf LLC sued Kate Spade LLC under the Federal Lanham Act, claiming that Kate Spade’s new brand “Kate Spade Saturday” infringed on its federally registered trademark “Saturdays Surf NYC.” Saturdays Surf LLC also claimed that its unregistered marks “Saturdays” and “Saturdays Surf” were being infringed.
The court found that “Saturdays Surf NYC” was a protected mark. However, it did take issue with Saturday Surf LLC’s attempt to claim infringement on its unregistered marks “Saturdays” and “Saturdays Surf.” First, the court found that many other companies were using the word “Saturday” or “Saturdays” to describe their line of clothing. The court held that the word “Saturdays” is commonly used in the context of apparel, and that the word alone is not protectable under the Lanham Act.
Second, the court ruled that while many consumers refer to “Saturdays Surf NYC” as “Saturdays Surf,” there was no evidence that any of Saturdays Surf’s products bore the name “Saturdays Surf NYC” without the “NYC.” Thus, Saturdays Surf failed to show that the unregistered mark “Saturdays Surf” warranted protection. Third, using the “digits of confusion test” the court found that: (1) the house mark Kate Spade in “Kate Spade Saturday” reflected a strong mark entrenched in the fashion industry; (2) “Kate Spade Saturday” and “Saturdays Surf NYC” were not similar marks; (3) the products produced were not similar, as Kate Spade produced exclusively women’s clothing while Saturdays Surf produced unisex apparel; (4) the products were sold in different channels of trade; and (5) the high price of the apparel reflected that they were marketed to sophisticated consumers. Thus, Saturdays Surf’s counter claim for trademark infringement lacked merit.
In today’s global economy, consumers have more freedom than ever to choose from a variety of goods and services. Therefore, trademarks serve a valuable purpose in helping a company distinguish its goods from others. The cost of tolerating trademark infringement can be high, and engaging in activity that infringes upon a competitor’s mark, even unintentionally, can lead to costly litigation.