Therefore, use, trade, and likelihood of confusion are three distinct elements necessary to establish a trademark infringement lawsuit. As a general rule, brands should be compared in their entirety, including appearance, sound, connotation, and commercial impression. However, if two brands are similar it may require dissecting and comparing the elements of each brand. Simply put, a plaintiff in a trademark case has the burden of proving that the defendant's use of a trademark has created a likelihood of confusion about the origin of the defendant's goods or services.
According to the Restatement of Trademarks, it is appropriate to consider the defendant's intent because a party seeking to cause confusion will generally succeed in doing so. As a general rule, a trademark owner can use a similar brand as long as they are on completely different products. The elements for a successful trademark infringement lawsuit are well established in federal and state case law. The First Amendment guarantee of freedom of expression may also take precedence over trademark law in certain situations.
If the quality is mediocre compared to the trademark, then there is more immediate damage and a greater likelihood that the confusion will be concluded. Therefore, for descriptive marks, there may be a period after the initial use of the mark in commerce and before it takes on a secondary meaning, during which you are not entitled to trademark protection. As a second element in a trademark infringement lawsuit, the owner must establish that another person used the trademark on or in connection with products or services. Similarly, the Coca-Cola trademark distinguishes brown sparkling water from one particular manufacturer from brown soda from another (for example, it can be presented in the form of notifications to the trademark owner or through proof that someone inadvertently purchased a product because it was discarded for the use of the trademark.
We hope that you now understand the basics of trademarks, how to protect them, and what constitutes infringement. Generic terms are not protected by trademark law because they are too useful in identifying a particular product. If the brand is descriptive (or a last name) or generic, the person claiming to be the owner of the brand may not be able to display a valid trademark. By making it easier to identify products, trademarks also offer manufacturers an incentive to invest in the quality of their products.
In addition to filing an infringement action, trademark owners can also file a trademark dilution lawsuit under federal or state law. Because the marks in each of these categories vary with respect to their distinctive character, the requirements and degree of legal protection afforded to a given trademark will depend on the category to which it belongs.
