Trademark Litigation Claims

Trademark litigation claims typically arise because one company has either infringed or diluted another company's trademark. Infringement occurs if the defendant’s use of the trademark is likely to confuse consumers. Dilution occurs if someone uses a famous trademark in a way that harms the mark or makes it less distinctive. For purposes of this article, we distinguish between the first (or senior) user of a trademark (entitled to superior rights over subsequent users) and the second or subsequent user (the junior user, and typically the defendant in trademark litigation).

Infringement and Likelihood of Confusion

To determine if trademark infringement a judge asks the question: Is it probable, under all of the circumstances, that consumers of the relevant goods will be confused? When it is probable that purchasers of goods will be confused by a junior user's trademark, there is a likelihood of confusion. Every circuit in the United States uses a multi factor analysis in determining if there is a likelihood of confusion. Although the number of factors may vary from each circuit, the principles are similar and all relate in some way to consumer perception. The more important factors are considered to be:

  • Strength of the Mark. A mark is "weak" if it is descriptive (it describes some aspect of the goods or services) and has not acquired sufficient secondary meaning (consumer goodwill and associations). A mark is "strong" when it has acquired secondary meaning, or if it is not descriptive (in which case it is considered arbitrary, fanciful or suggestive). The owner of a weak mark will have more difficulty proving likelihood of confusion.
  • Similarity of the Marks. As a general rule, marks must be compared in their entirety, including appearance, sound, connotation and commercial impression. However, whether two marks are similar may require dissecting and comparing the elements of each mark. In addition, the similarity of the meaning of the marks may also be taken into consideration. For example, the following marks were held to be similar: Mr. Clean and Mr. Rust and Mr. Stain; Thirty Forty Fifty and 60 40 20; and Pledge and Promise
  • Similarity of the Goods. The standard of infringement is whether an ordinary prudent purchaser would be likely to purchase one item, believing he was purchasing the other. For example, Chlorit when used on bleach is likely to be confused with Chlorox. As a general rule, a trademark owner is permitted to use a similar mark as long it is on completely dissimilar goods. For example, the use of the mark Lexus on automobiles was determined not to confuse consumers of the Lexis database services. The courts also consider the similarity of the advertising and distribution channels.
  • Degree of Care Exercised By the Consumer. The degree of care exercised by the consumer varies according to the purchase. Generally, a buyer making a very expensive purchase is more likely to be discriminating and is less likely to be easily confused as to similar marks. The reason for this higher degree of care is because the consumer buys expensive items less frequently. Therefore the courts assume that such purchasers are likely to be more discriminating and source-conscious when purchasing real estate services, insurance or other "high ticket" items.
  • Defendant's Intent. Although the intent of the defendant is not essential in proving infringement, it is a relevant factor. According to the Restatement of Trademarks, it is appropriate to consider the defendant's intent because a party intending to cause confusion will generally be successful in doing so.
  • Actual Confusion. Proof of actual confusion is not essential in determining trademark infringement. However, such evidence may be compelling in an infringement case.


What if a defendant is using a famous trademark on noncompetitive goods and there is no likelihood of confusion? For example, if the trademark Playboy is used by an auto body shop. Does the owner of the Playboy mark for publishing have a claim?  Under the Federal Dilution Act (as well state dilution laws) the trademark owner may claim that the defendant's use dilutes the distinctive quality of the mark. In the Playboy case, above, a state court determined that the magazine company had a valid claim for dilution. To bring a dilution claim under federal law, the mark must be considered famous – distinctive and well-known.

Related Claims

Trademark infringement actions are often related to other injuries or claims. For example, if the defendant copied artwork from the plaintiff's packaging, that may give rise to a claim of copyright infringement. If a patented design were copied, that may give rise to a claim of patent infringement. When the trade dress of the package has been copied, this may be characterized as a claim of unfair competition under federal or state law. False or deceptive sales statements may give rise to a claim of false advertising. The owner of a federal trademark registration may also bring claims for common law unfair competition and for violation of state trademark laws as well as dilution.