When the “trademark bully” epithet is hurled at a trademark owner “caught in the act” of enforcing or otherwise protecting its intellectual property rights, another common accompaniment is the expressed outrage and indignation that no one could ever possibly be confused.

Here are a few points worth noting:

  1. The test of infringement is likelihood of confusion, not actual confusion.
  2. Likelihood of confusion is not only to source, but sponsorship, affiliation, etc.
  3. If a famous mark is involved, likelihood of confusion isn’t even required.

And, perhaps most importantly, as the Trademark Trial and Appeal Board recently reminded, likelihood of confusion determinations must be based on “the least sophisticated potential consumers.”

Let’s just say, look around, that’s an awfully low threshold.

So, when hurling the epithet it’s probably a good idea to make sure your conclusion to apply the label is based on what the law is, and not what you think the law should be.

  • john troll

    Oh sorry my mistake. When Kellogg’s sent a cease and desist letter to the Mayan Institute objecting to their use of a Toucan, one their most precious cultural symbols, when Monster Cable sent a cease and desist letter to a haunted house themed mini- golf course, when Subway sent a cease and desist letter to a foot long hot dog stand they were acting in accordance with the law as it is. Protecting America’s most dimwitted consumers. There’s no problem here. Just move on.

  • Steve Baird

    John, actually the examples you cited are good examples of overreaching — my point was not that overreaching doesn’t exist, but a caution that there are many examples where folks hurl around the “trademark bully” label without any understanding of what the law is, and they seem to adopt the label based on what they think the law should be.

  • john troll

    Steve:
    I take your point. But I think the problem comes from the other direction- brand owners. It’s the brand owners who too quickly throw their weight around based on a “calling to mind” standard that is much lower than than a likelihood of confusion standard. They may use the language of traditional infringement but what they are seeking is a broader orbit around their marks. It is the reaction to this conduct and the advent of the Internet that has generated so much publicity. All this at time when the number of litigated tm cases drops each year. And the number of cases decided soley on dilution is, I believe, miniscule.