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Trademark Law: When Does Similar Become Too Similar?
At a recent gathering, a friend explained that he was thinking of starting a new business and registering its name as a trademark. He did have one “minor” worry: another company offering a similar service had already registered that same name as a trademark. However, my friend believed that he could simply add the word “The” to the name, and he would then have a new trademark. I had to speak up for the sake of sparing my friend future legal trouble, as he misunderstood a fundamental aspect of trademark law.
Whether or not one trademark infringes upon another depends on whether there is a likelihood that consumers will find the marks confusingly similar. In a trademark infringement lawsuit, the likelihood of confusion is determined by examining factors such as (1) the similarity of the marks; (2) relatedness of the companies’ products; (3) the strength of the plaintiff’s trademark; (4) the channels by which the goods will be marketed; (5) the degree of care exercised by relevant purchasers in selecting such goods; (6) the accused infringer’s intent in selecting its mark; (7) evidence of actual consumer confusion; and (8) the likelihood of expansion of either company’s product lines, such that they might come into conflict in the future.
Based on these factors, it should be obvious that simply adding “The” to a trademark does not create an acceptable new mark, because consumers seeing two similar marks on similar goods likely would be confused as to whether the same company was using both marks. For example, if you saw soda bottles marked “The Pepsi”, wouldn’t you assume that this soda was made by the same company that makes Pepsi? When marks are virtually identical, this factor weighs heavily in favor of a finding of infringement. Likewise, changing the spelling to “Pipse” would probably not be acceptable, especially for a beverage product. This is why, before you pick a name or trademark for a new business, you should first contact a lawyer who can search for existing trademarks to make sure that your proposed mark is not confusingly similar to someone else’s mark.
