You’ve probably read about companies that have had to stop using names, logos, or other trademarks because a competitor believes the mark infringes on theirs. If you receive a warning like this (technically called a cease and desist letter), consult with an intellectual property attorney.
Below is some information that can help you avoid trademark troubles in the first place—and, if you do run into a problem, it may help you decide how to respond.
Trademark infringement occurs when one company uses another company’s trademark (or a substantially similar mark) in a manner that is likely to confuse consumers into believing that there’s some connection, affiliation, or sponsorship between the two companies. This usually occurs when a trademark is used on similar goods. For example, in 2008, an iPhone developer released an arcade game with similarities to Tetris called Tris. Fifteen days later, he pulled it from Apple’s App Store after the Tetris Company, which licenses the famous game, complained to Apple about the game.
When determining how likely it is that consumers will get confused, courts usually use several factors that may vary slightly depending on where you are. The important issues are usually the strength of the senior user’s mark (the senior user is the one who first used the mark), the similarity of the marks and products, the sophistication of the buyers, and evidence of actual confusion. If you’re interested reading more about trademark disputes, check out Trademark: Legal Care For Your Business and Product Name (Nolo) or read The Trademark Blog (http://www.schwimmerlegal.com), the leading blog on the subject.
Sometimes, even if there’s little likelihood of customer confusion, a company with a famous trademark can stop another company from using its famous trademark in a manner that blurs the two companies in customers’ minds. This is referred to as trademark dilution, and occurs when the integrity of a famous trademark is “muddied” by an unwanted or insulting commercial association. For example, if you create an app that produces farting sounds and call it Wal-Fart, you will most certainly hear from Wal-Mart’s attorneys because your use creates an association that dilutes their famous mark.
Altering a trademark in a comparative advertisement can also be considered dilution. For example, in a TV ad, an equipment manufacturer animated the John Deere “deer” logo and appeared to make it run from the competition, and the courts ruled that this muddied the John Deere brand.
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