Reaffirmation of a Key Trademark Rule

Florida International University Board of Trustees v. Florida National University

“Under the Lanham Act, 15 U.S.C. §1114(1), a defendant is liable for trademark infringement if, without consent, he uses ‘in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark’ that is ‘likely to cause confusion, or to cause mistake, or to deceive.” Effectively, what a successful plaintiff will need to prove is that they had a right to the trademark, and that the actions of the defendant are likely to cause consumer confusion. In Florida International University Board of Trustees v. Florida National University, the court takes an extensive look at the seven factors that are assessed when evaluating consumer confusion related to a trademark.

The seven factors that are considered in assessing the possibility of consumer confusion:

1. The strength of the allegedly infringed mark
2. The similarity of the infringed and infringing marks
3. The similarity of the goods and services the marks represent
4. The similarity of the parties’ trade channels and customers
5. The similarity of advertising media used by the parties
6. The intent of the alleged infringer to misappropriate the proprietor’s good will
7. The existence and extent of actual confusion in the consuming public

If you think there is the possibility of a §1114(1) Lanham Act violation take a look at the above factors to get a sense of what will be required to show consumer confusion, and subsequently for a successful claim.

This article is provided for informational purpose only and is not intended as a form of legal advice. If you have any questions on the subject matter of this article, call Roland Tong, at 949-298-6867 or email Mr. Tong at [email protected]. Mr. Tong has been obtaining patent, trademark, copyright, and trade secret protections for his clients since 2001. He has represented a wide range of clients from start-up companies to Fortune 500 companies in a wide range of industries.