Trademark Infringement and Likelihood of Confusion

A generic trademark is when the name of the mark is the actual name for that product. Examples include: STRAWBERRY for strawberries, or LAW FIRM for a law firm, or TRADEMARK ATTORNEY for a Chicago trademark attorney. A generic term is not eligible for trademark registration . The reasoning is that to allow an individual the sole ability to use the name would give them an unfair advantage over all other individuals that need that term to describe their product. Imagine the first person to register STRAWBERRY being able to block all grocery stores or restaurants from using the term STRAWBERRY to sell strawberries. All later users would have to describe their product as a red edible object.

Federal trademark registrations can become generic even after they have a valid registration. This process is called trademark genericide. Genericide transpires when the meaning of the mark is now associated with the actual name of the product. When this happens, the trademark can no longer distinguish the source of the product that contains the generic term. Examples of former registrations that became generic after a valid registration include: ASPIRIN, THERMOS and VELCRO.

A New York federal district court recently ruled on a suit initiated by Tiffany & Co. (“Tiffany’s”) against Costco Wholesale Corporation (“Costco”). Costco began describing some of their engagement rings as a TIFFANY ring or a TIFFANY SETTING. However, Tiffany’s is the owner of numerous federal trademark registrations for TIFFANY under international classifications containing jewelry. Thus, Tiffany’s initiated a trademark infringement suit against Costco. Costco responded by asking the judge to rule that Tiffany’s trademarks are now a generic term for a specific style of ring, a ring with six prongs. This would result in the cancelation of the trademark registrations held by Tiffany’s.

When analyzing the rights of each party to a trademark infringement claim, the likelihood of confusion test is what is determinative to the outcome of the lawsuit. While each element of the test is viewed as a whole, certain elements that can be particularly persuading include: (1) the similarities between the marks, (2) the similarities between the goods offered in connection with the marks, and (3) cases where consumers are actually confused as to the source of the good. The Federal Court found that the Tiffany and Costco marks were identical (TIFFANY and TIFFANY SETTING). The court was also able to find that the goods associated with the marks were identical (jewelry). Finally, Tiffany’s was able to submit evidence proving that there has been actual cases where actual consumers were confused as to whether Costco was now selling Tiffany’s rings.

Another element that was vital in the court’s determination was the use of consumer survey evidence. In all trademark infringement cases, consumer surveys need to be conducted in order to have a shot at a successful prosecution or defense. Tiffany’s completed a survey of over 450 men and women, where 9 out of 10 who participated, associated the term TIFFANY as identifying the source of a product, and not as a generic term.

After analyzing the evidence in the case, the federal court ruled the term TIFFANY is not a generic term for a type of ring or a specific type of diamond setting. Thus, the court granted summary judgement for Tiffany’s on each of their claims against Costco.

If you believe your trademark is being infringed by another, or you need to defend yourself against a trademark infringement or other Charleston business litigation, contact our business and trademark attorney, who has experience guiding clients through the trademark litigation process or advising clients whether use of their proposed mark would violate an existing trademark.  If you are in Illinois, please contact a Chicago commercial litigation attorney of Zeller Law.

Share This Story, Choose Your Platform!