A Quick Guide to Trademark Infringement and DuPont Factors

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?

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 accordingly registered under different trademark classes).

Likelihood of Confusion

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 that review trademark infringement use a similar method to this question, but on a much larger and more complex scale.

In the contexts of the law, these questions and tests are generally referred to as "DuPont Factors."

The 13 DuPont Factors Used in Trademark Infringement Cases

The thirteen DuPont Factors used in most trademark infringement cases are as follows:

1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
2. The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
3. The similarity or dissimilarity of established, likely-to-continue trade channels.
4. The conditions under which and buyers to whom sales are made, i. e. "impulse" vs. careful, sophisticated purchasing.
5. The fame of the prior mark (sales, advertising, length of use).
6. The number and nature of similar marks in use on similar goods.
7. The nature and extent of any actual confusion.
8. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
9. The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark).
10. The market interface between applicant and the owner of a prior mark. For example, (a) a mere "consent" to register or use, (b) agreement provisions designed to preclude confusion, such as limitations on continued use of the marks by each party, (c) assignment of mark, application, registration and good will of the related business, and (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.
11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
12. The extent of potential confusion. For example, whether de minimis or substantial.
13. Any other established fact probative of the effect of use.

Further, the weight given to these factors can vary on a case-by-case basis, and the court can include or exclude any of these factors when determining whether a copyright infringement occurred.

Importantly, the USPTO notes that the following two factors are key considerations in any likelihood of confusion determination:

• The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
• The relatedness of the goods or services as described in the application and registration(s).

Put simply, the court will weigh a variety of factors when determining whether two marks are confusingly similar, and the relative weight of each of these factors can change on a case-by-case basis.

Resolving Trademark Infringement Cases

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

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.