If you’ve ever seen the 1988 movie “Coming to America” starring Eddie Murphy, you surely remember the laughable scene when Cleo McDowell (played by John Amos) shows Prince Akeem (Eddie Murphy) around his restaurant. “Cleo” says,
“Look.. me and the McDonald’s people got this little misunderstanding. See, they’re McDonald’s… I’m McDowell’s. They got the Golden Arches, mine is the Golden Arcs. They got the Big Mac, I got the Big Mick. We both got two all-beef patties, special sauce, lettuce, cheese, pickles and onions, but their buns have sesame seeds. My buns have no seeds.”
While this scene makes great comedy, in real life this scene makes you a defendant in a trademark infringement lawsuit.
A trademark can take many forms such as a word, symbol or phrase. In the case of nationally, instantly recognizable brands, a trade dress may be the color and packaging of the product. Trademarks make products distinguishable from one another. These items may be protected when the consumer associates them with a particular product or manufacturer, but not when that packaging is about functionality (i.e., stackable).
The litmus test for whether or not trademark infringement has been committed is the “likelihood of confusion.” If such a case goes to trial, the court will examine several factors such as:
• The strength of the mark;
• The proximity of the goods;
• Similarity of the marks;
• Evidence of actual confusion;
• Similarity of marketing channels used;
• The degree of caution exercised by the typical purchaser; and,
• The defendant’s intent
Keeping the above factors in mind before you complete the development of your product or service will save you time and money in the long run. It pays to do your due diligence and to get the advice of someone with expertise in this field.