How Defend-able is Your Trademark?

Shiny Registered Trademark SymbolWhat do you do when you find out someone else is using your name to sell products or services? Send a cease and desist notice? Sue for trademark infringement? So is the case of POM Wonderful, LLC [“POM Wonderful”] v. Robert G. HUBBARD, Jr., DBA Portland Bottling Company, DBA Pur Beverages [“Pur”]. Pur Beverages began selling its pomegranate flavored energy drink using the word pom. POM Wonderful took exception. POM Wonderful filed a trademark infringement claim against Pur Beverages seeking to stop the use of the word pom in association with Pur Beverages energy drink. POM Wonderful sought an injunction. The trial court denied the preliminary injunction. The appeals court remanded the case back to the trial court to reconsider the issues.
When issuing a preliminary injunction, the court looks at the likelihood of prevailing on the trademark infringement claim. Here is a listing of factors considered by the appeals court:

1. trademark interest
2. likelihood of confusion
3. strength of trademark
4. the relatedness between goods or services
5. consumer care
6. similarities of the marks
7. marketing channels
8. actual confusion, intent, and expansion

When examining whether a trademark infringement is present all factors are considered. Not all factors have to present and no one factor is determinative if a trademark infringement is present.
If you see, someone else using your marks take a moment to evaluate the factors. It is not a deductive reasoning process. In the POM Wonderful case it required to 2 courts. And, we still don’t know the answer.

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