What Is a Trademark Violation?

The big issue is the threat of customer confusion.

A trademark violation, or infringement, is the use of the same or a confusingly similar trademark to that in established use by another vendor, without that other vendor's permission.



The requirement that a potential defendant's mark be confusingly similar to the plaintiff's has itself generated a good deal of judicial deliberation, if not necessarily confusion.

Registration Is Not Required

Some trademarks are stronger than others.

It is not necessary in the United States, or in common-law jurisdictions in general, that a plaintiff show that it has registered the trademark in question. Legitimate use is sufficient to create a "protectable interest." But registration helps establish a "strong" mark, which can become an issue in litigation.

Same Mark in the Same Market

An important precedent involves the sale of flour.

It is easiest to make a case for an infringement in cases in which the newer user of the same trademark is competing in the sale of the same product or service as the older user.

In 1882, the flour merchants Holt & Co. registered the name "La Favorita" as a trademark for their flour. A former member of Holt & Co., Stephen O. Ryder, left the firm and went into the flour trade on his own. He also used the term "La Favorita."

In Menendez v. Holt (1888), Chief Justice Fuller wrote for the U.S. Supreme Court: "The intentional use of another's trademark is a fraud....Persistence then in the use is not innocent, and the wrong is a continuing one, demanding restraint by judicial interposition when properly invoked."

Same (or Similar) Mark in Different Markets

It is crucial to understanding the significance of Menendez v. Holt, that Ryder, after leaving Holt & Co., continued to trade within the flour market.

The question of when one firm's use of a trademark infringes on the rights of another in the absence of direct competition between them is often far from clear cut.

A Mid-20th Century Precedent

Defendant said "rad" stood for "radio."

One important precedent in the development of trademark law over recent decades was Polaroid Corp. vs. Polarad Electronics Corp..

Polarad was organized in December 1944 to sell microwave generating, receiving and measuring devices and television studio equipment. Polaroid was already well known, chiefly for glasses and polarizing filters. In response to a lawsuit by better-known Polaroid, defendant claimed that the "Po" in "polarad" came from the initials of its founder, Paul Odessey, that the second syllable came from the beginning of the first name of Odessey's friend, Larry Jaffe, and that the "rad" simply symbolized radio.

The Defendant Won

Several factors come into play in litigating such a conflict as Polaroid vs. Polarad. The exact list of the factors varies from one circuit to the next, and the respective weight of its different elements can vary from one case or judge to another. In general, though, courts will take into account:

a) how similar the products or services are that the plaintiff and the defendant sell;

b) how "strong" the plaintiff's mark is--whether it is registered, whether it is arbitrary (the more arbitrary and less descriptive, the stronger), the more widely it is recognized;

c) whether the products or services have overlapping customer bases--or marketing "proximity," as courts sometimes call this;

d) and whether the defendants acted in good fact.

The Second Circuit in 1961 upheld the district court, which had held in favor of defendant Polarad.

References

• Harvard Law School: Overview of Trademark Law
• Harvard Law School: Polaroid Corp. vs. Polarad Elect. Corp.
• International Trademark Association: Information & Publishing
• Justia U.S. Supreme Court Center: Menendez vs. Holt