Contemplating the Theories of Confusion in Trademarks: Confuse No More!

 

As is understood, a trademark is a mark that helps identify the origin or source of goods and services with the help of a uniquely differentiable graphical representation, which may be manifested in the form of a sign, symbol, word, label, or even a combination of several elements put all together. Therefore, it aims to differentiate the goods and services of one from that of another in today's era of a global market, eliminating the risk of confusion and losses accompanied by such risks.

 

When a trademark is scrutinized by a Trademark Office or when it is underdetermination for possible infringement, it is often subjected to the test of "likelihood of confusion." Hence, in such a scenario, there is a clear division of parties and their interest. The party that first adopts a mark by using it in the market is termed as the Senior or First User, and the one that adopts a similar mark later than that of the Senior User comes to be identified as the Junior User.

 

The Initial Interest Theory: The Consumer Perspective

The main aim of a consumer while seeking a particular good or service is finding a distinguished quality and preferred price. Due to the plethora of options available in the physical market and the digital space, there has been an unprecedented growth in the number of counterfeit goods, which misappropriate trademarks resulting in consumer confusion. The initial interest theory is often taken into consideration by judges and courts to understand the psychology of consumers when contemplating similarities between trademarks by considering the imperfect recollection memory of a consumer, the behavioral pattern of a consumer while deciding what to purchase, etc. This theory is further bifurcated into two crucial theories, which can be understood in the next segment.

 

The Forward Confusion Theory

In infringement cases, it is often witnessed that there is a small entity, which is a new entrant, wrongfully posing as another massive entity to take advantage of the established reputation and goodwill by simply creating consumer confusion while misrepresenting its trademark. A deliberate attempt to create confusion is made to suggest an affinity with a Senior User, which harms the commercial and moral interest of the Senior User as well as that of the consuming audience since such goods often under-deliver and underperform on the scale of quality and quantity.

 

The Reverse Confusion Theory

The very opposite of the forward theory of confusion is the theory of reverse confusion. In such cases, a consumer fails to distinguish between goods and services of the Junior and Senior User of a mark and associates the underlying products to be originating from the Junior User on account of a robust marketing and a saturated market. The same leads to a lack of recognition of the Senior User causing potential harm. It can be somewhat mindboggling.

The theory came much into the picture in Big O Tire Dealers, Inc. vs. Goodyear Tire & Rubber Co., wherein it was held that "the second use of a trademark is actionable if it simply creates a likelihood of confusion about the source of the first user's products."

Last year, the case of Ironhawk Technologies, Inc. v. Dropbox, Inc. (decided on April 20, 2021) came forth to the Ninth Circuit, where the theory was under much speculation. Herein, the plaintiff was a computer software developer of 'SmartSync' developed in 2004, utilizing compression technology to enable an efficient transfer of data, particularly in bandwidth-challenged environments. Its products were sold majorly to the US Navy. Dropbox brought cloud storage software to be made accessible throughout the world. Its software featured 'Smart Sync' while enabling a user to see and access files in his Dropbox cloud storage account without using up any of the user's hard drive storage. Furthermore, Dropbox launched its Smart Sync feature in 2017 and was previously aware of Ironhawk's SmartSync mark. Ironhawk brought a case against Dropbox for the violations of the Lanham Act alleging Trademark Infringement and unfair competition, pleading that Dropbox's use of the name 'Smart Sync' intentionally infringed upon Ironhawk's 'SmartSync' trademark. At an earlier event, Dropbox had attempted to acquire Ironhawk, evidencing recognition of the competitor. The Ninth Circuit deduced in favor of Ironhawk since it stated that there was a likelihood of reverse confusion. However, when the case went for further trial, Judge Wallace Tashima found the judgment of the Ninth Court to be erroneous since Ironhawk only had a "sophisticated audience," unlike Dropbox, catering to a much wider audience. Therefore, it was found that it was unlikely that reverse confusion may have occurred.

 

Conclusion: Points of Consideration

There is no rigid test laid down to deduce the application of the theory of reverse confusion; however, courts have developed a case-bade modified multi-factor test. The underlying factors shall be taken into consideration when deciding on reverse confusion:

 

• The conceptual strength of the mark - The courts evaluate whether the mark is suggestive, arbitrary, fanciful, or descriptive. The more strength it carries, the more distinctive it is. Therefore, if a mark is more distinctive, there is more likelihood of confusion since the attempt to imitate becomes rather apparent.
• The similarity between the two marks: The court will determine the visual, ocular, and phonetic difference between the marks while drawing a comparison of the totality of the mark.
• Possibility of actual confusion: The likelihood of confusion will be assessed considering the adjoining factors like channels of trade and commerce, the consuming audience, the quality and quantity of the product, etc.
• The intention of the infringer

 

Even though the courts are bringing to consider such theories of confusion, it will be interesting to observe how they would grant awards supporting the theory since it may land a chilling effect by over-compensating the Junior User.

Protecting your Brand's Integrity with a Trademark

 In the present fast-paced society and highly competitive environment, establishing a strong brand is pivotal to the success of every other business. Furthermore, protecting that brand deserves your utmost attention too. Yet, a lot of small scale businesses and startups nowadays overlook a crucial step in securing their brand - Trademark Registration.

What can be trademarked?

A trademark is a form of Intellectual Property (IP), which may be any unique name, word, symbol, or device used to identify and further distinguish the goods of one seller from those of others, for instance - Nike's Swoosh (logo). Besides, a trademark allows the seller to safeguard what's trademarked efficiently from both use and misuse by competitors while establishing brand loyalty among the customers. Trademarks also prevent confusion among the customers, who usually come to associate distinct attributes, to be specific quality, with a unique brand.

From a branding perspective, you can protect several assets, including names, taglines, logos, and packaging. However, it is imperative to make a point of the fact that these assets can obtain Trademark Protection only if they meet the subject matter eligibility. A phrase or word that's commonly used or already connected with another service or product in the same industry can't be trademarked. Let's consider an example to understand it. A generic term like "search engine" can't obtain trademark protection; however, a unique name like "Google" can. On the other hand, if your name is generic but used in the industry that's typically not related to the meaning of the term, then you may be able to trademark it, for instance - Apple (tech giant).

As a general rule, you can go ahead with trademarking your business name, if in case you use it while advertising to your target audience directly. If you are not making use of your business name in direct communication with your customers, then you can't obtain trademark protection for it as you are not connecting your name to your brand and also its attributes. Without any second thoughts, if your business name will be a critical part of your overall marketing strategy, then you must consider trademarking it. Additionally, the logo and tagline of your brand can also prove to be exceedingly good candidates for seeking trademark protection. The first litmus test corresponds to whether they are unique or not. The aspects that make a logo unique are the combination of the symbol with the company or brand name, their spatial relationship, and the colors. If the brand's tag line is a unique phrase, then you can consider trademarking it as well. For instance, Apple's "Think Different" connects its brand attribute, that is, quality, to its products.

The Trademark Registration Process

It is not necessarily expensive to obtain trademark protection. In the US, whoever establishes priority in a proposed mark is generally considered as its owner. To keep it straightforward, if you are the first company or individual using a unique mark for identifying your services or products, you don't need to register it for gaining the corresponding Trademark Rights. However, you must add the TM symbol to the brand to which you are claiming rights. Still, it is not a substitute for registering a proposed mark through the US Patent and Trademark Office (USPTO), which indeed establishes ownership to a great extent and beyond a doubt.

It is crucial to keep in mind that everything depends highly on the uniqueness of your proposed mark. In today's digital era, the Internet is undoubtedly a brilliant platform for starting your Trademark Search. You can proactively visit the free websites, like the ones maintained by the USPTO, to make yourself familiar with the already existing trademarks. Besides, you can also consider hiring an attorney specializing in the Trademark Law for conducting detailed searches.

In the US, a trademark can be registered at the federal or state level. State-level trademark registrations are expensive and less potent than the federal trademark registrations. Quite often, a trademark is registered within one industry; however, it may be registered in more than one as well. The best option, without any doubt, depends on the scope of your business and its geographic area of operation. International trademark protection is much more costly, extremely complicated, and expensive to enforce.

If you go ahead with filing a Trademark Application with the USPTO, then it will make sure that no other trademark similar to yours exists. The trademark registration process can take months. Therefore, it is highly advisable to do your homework well, because if your proposed mark resembles an already existing trademark, then your trademark application will face rejection.

It is a matter of fact that yes - the more you try to differentiate your brand from others in the industry, the more convenient it will be for you to safeguard it in the best possible manner. So, pick a name or logo that identifies your brand uniquely and protects it from your competitors.

Ref: https://www.kashishworld.com/blog/protecting-your-brands-integrity-with-a-trademark/

An Overview of Trademark Registration and Protection in Nigeria

 Nigeria, a sovereign country located on the western coast of Africa, is the most populous nation with the largest economy in the continent. It also has a fast-growing services sector with a rapidly increasing need for consumer goods. Without any second thoughts, all these factors do make Trademark Registration a crucial aspect in the nation.

GENERAL INFORMATION

In Nigeria, the Trade Marks Act, Cap T 13, the Laws of the Federation of Nigeria 2004 ("TMA"), and the Trademark Regulations 1990, form the legal basis of trademark registration and protection. The Act defines a trademark that is capable of identifying and distinguishing the source of the goods of one company or individual from those of others. A trademark may include a label, name, brand, device, heading, letter, word, signature, numeral, or any combination of these elements. When it comes to trademark registration, the Nigerian Trademark Law classifies goods into thirty-four (34) international classes. In Nigeria, multi-class Trademark Applications are not allowed; therefore, a separate application needs to be filed for registration in each of these classes. Also, unlike other jurisdictions, 'USE' is not a requirement for the registration of trademarks in Nigeria.

In Nigeria, the Trademarks, Patents, and Designs Registry (under the Commercial Law Department of the Federal Ministry of Trade and Investment) is the concerned trademark authority that governs and deals with the mechanism of trademark registration. The trademark application must be filed by the proprietor or an agent with the exception in the scenario of a foreign proprietor where a local agent must be hired. Except for the bureaucratic delays at the Registry, the time frame to complete the registration procedure is usually 12 to 18 months.

Trademark registration in Nigeria gives an owner the exclusive rights to the registered trademark corresponding to the specific goods or classes of goods in which it was originally registered. If a person or company uses the same trademark or any other mark similar or identical to it, which is likely to deceive or confuse the public, then it becomes a case of Trademark Infringement.

TRADEMARK REGISTRATION PROCEDURE IN NIGERIA

1. TRADEMARK SEARCH - Before filing the trademark application, it is highly advisable to perform adequate trademark searches and determine the availability of the proposed trademark.
2. REQUIREMENTS - The following documents and details are required to go ahead with trademark registration in Nigeria:
   • Details of the applicant or proprietor, including name, nationality
   • Well-defined representation of the proposed trademark
   • Class and specification of goods or services for which the proposed trademark is to be registered
   • Power of Attorney (POA) duly signed by the applicant, and where the applicant is a body corporate, by an officer who is authorized to do the same. Note - No legislation or notarization of this document is required.

3. TRADEMARK APPLICATION FILING - Once all the details in the trademark application have been filled and the same is submitted along with the required documents, the Registrar shall issue an Acknowledgement Form, which confirms the receipt of the trademark application by the Registry. Also, a temporary number is allocated to the pending trademark registration.
4. EXAMINATION - The Registrar then examines the proposed trademark to ensure that there is no already existing conflicting trademark, which may preclude its registration. The examination process shall also extend to whether the mark is deceptive, distinctive, or scandalous in any way or not. The proposed trademark must not contain prohibited words, names of single chemical substances, national flag, Arms of Nigeria or state, names of cities, towns, places, and societies, names of living persons or persons recently dead (except with permission).

If the Registrar gets satisfied with the proposed trademark, he or she shall issue an Acceptance Form, which is generally issued within three (03) weeks after the issuance of the Acknowledgment Form. In the other scenario, a Refusal Form will be issued. In the case of acceptance, the application will be published in the Trademarks Journal to notify any interested party that may have an objection to the said trademark registration.

5. OPPOSITION - Any interested party may initiate the opposition proceedings by giving a notice of opposition within two (02) months of the publication of the proposed trademark in the Trademarks Journal. It is imperative to make a point of the fact that this period is non-extendible. The hearing of the opposition takes place before the Registrar, who shall take the decision after listening to both the parties and considering all the evidence in the matter. Additionally, the decision of the Registrar in this matter may be appealed to the Federal High Court.
6. REGISTRATION - If no opposition proceedings are initiated against the proposed trademark or the oppositions are resolved well in favor of the applicant - the Registrar shall issue the Certificate of Registration to the applicant.

TRADEMARK PROTECTION AND RENEWAL TERM IN NIGERIA

In Nigeria, trademarks are registered for an initial period of seven (07) years starting from the date of the application, which can be further renewed indefinitely for periods of fourteen (14) years.

Ref: https://www.kashishworld.com/blog/an-overview-of-trademark-registration-and-protection-in-nigeria/

Importance of Trademark Registration in India

In the present highly competitive economy, it is imperative for business firms, organizations, conglomerates, and startups to know and understand the importance of Trademark Registration for flourishing their businesses. A trademark is an exclusive form of Intellectual Property (IP) that makes a distinction between the products or services of a specific manufacturer, business owner, or trade person from those of the others. The primary goal of a trademark is to safeguard the interests of not only the owners or traders but also the consumers. A trademark helps in marketing and promoting the products and services and provides information about their quality. It also enables an enterprise or organization to acquire the Trademark Rights to utilize, sell, or distribute a registered mark. With trademark registration, you can enjoy all such benefits and make your potential customers identify your brand with the Registered Trademark of its name or logo.

In India, The Trademark Act of 1999 presents a legal basis for governing and dealing with the mechanism of trademark registration and Trademark Protection. Trademark registration is classified into several different categories based on the nature of the business and activities they manage or operate. There are 45 different classes corresponding to various types of products and services. The process of trademark registration is governed by the Controller General of Patents, Designs, and Trademarks along with the Ministry of Commerce and Industry and the Government of India. They keep track of every registered trademark and maintain a registry for every type of product and service. The trademark registration term is ten years in India, which is renewable every ten years.

Significant Aspects of Trademark Registration in India

1. With trademark registration, a label, brand, or business can manage to gain an extreme amount of exclusivity. Also, the customers and target audience shall uniquely identify your products and services and differentiate them from those offered by your competitors in the market.
2. When a trademark exists for a brand or business, the value of its products and services - increases exceptionally and automatically. Additionally, it becomes comparatively easier to advertise, promote, or market a brand with its corresponding registered trademark. Last but not least, as the most profitable aspect, a trademark holds immense potential for enhancing the product's overall market value.
3. For having a competitive edge and advantage over your potential rivals, it is essential to go ahead with getting your trademark registered. As a crucial business element, a trademark adds to the value of the brand and increases brand awareness.
4. It is integral for a company or organization to protect the brand's entity or name by getting the trademark registered and displaying ownership of trademark rights. With trademark registration, the owner shall own the exclusive rights to utilize, sell, distribute, license, or alter that product in any manner.
5. On being successfully registered, trademark protection can last up to a lifetime, with the renewal term being once in every ten years.
6. When it comes to communication, a trademark is indeed the best tool as it gives unique and relevant information about a company's products and services, and portrays a positive reputation.
7. A registered trademark offers ease to online users by helping them in distinguishing between a large number of products and services and finding the most relevant one for themselves. Many search engines, like Google, and social media platforms like Facebook and Instagram, are capable of identifying the trademarked products quickly within a few clicks. Consequently, there is a higher degree of brand reputation for a business on the Internet as well.
8. The owner of the registered trademark is entitled to initiate legal proceedings, file a lawsuit against the violators, and even demand monetary damages or compensation if under any circumstances his trademark rights are infringed.

 Ref- https://www.kashishworld.com/blog/importance-of-trademark-registration-in-india/

US Supreme Court to Review Booking.com Case in Trademark Test

The US Supreme Court has recently agreed to hear the arguments over the trademark case involving an online hotel reservation service, Booking.com, and decide whether it is entitled to Trademark Protection for its name or not. Based out of Amsterdam, Booking.com began using its name globally in 2006 and filed various Trademark Applications between 2011 and 2012. The trademark dispute over the site's name began in 2016 when the US Patent and Trademark Office (USPTO) had rejected Booking.com's request to trademark its name. The USPTO said that the name Booking.com was way too generic for obtaining trademark protection.

Booking.com challenged the USPTO's decision in court, and the company prevailed in 2017 when Leonie Brinkema, the US District Court Judge in Alexandria, Virginia, said in a ruling that although the word 'Booking' is generic, adding the top-level domain '.com' qualifies it for Trademark Registration.

However, the USPTO had then appealed to the Richmond, Virginia-based 4th Circuit Court of Appeals, which also ruled in favor of Booking.com by stating a few slightly different reasons. The appellate judges said that the name Booking.com as a whole is understood by the public to refer to a particular business, and the USPTO had failed to prove that customers believe Booking.com, in general, refers to online hotel reservation services.
The USPTO then asked the US Supreme Court to review the 4th Circuit Court of Appeals' ruling and accordingly make a decision. While appealing to the Supreme Court, the USPTO said that the addition of '.com' to a generic word does not make it distinctive. On the other hand, Booking.com has asked the Supreme Court to uphold the 4th Circuit Court of Appeals' ruling and referred to itself as one of the best-known accommodation and travel services in the US.

The Circuit Court of Appeals in 2009 had ruled that the names 'Mattress.com' and 'Hotels.com' weren't entitled to trademark protection. Booking.com countered that by saying customers know the term Booking.com as a company name. It even went forward and specifically took reference from a survey, which indicated that approximately 75% of the customers recognize Booking.com as a brand and not as a generic service.

Ref- https://www.kashishworld.com/blog/us-supreme-court-to-review-booking-com-case-in-trademark-test/

SPJ Florida Pro Chapter Attempts to Trademark Trump's 'Fake News' Mantra

The Florida Pro Chapter of the Society of Professional Journalists (SPJ) has filed a Trademark Application for the term 'fake news' with the US Patent and Trademark Office (USPTO). The journalists want to take the trademark ownership of 'fake news' as President Donald Trump frequently uses the term to criticize the information he doesn't like and discredit the stories.

Emily Bloch, Florida Times-Union reporter, published an essay on 21st October 2019 in Teen Vogue (a former US print magazine and current online publication) announcing that members of her local SPJ have a pending trademark application with the USPTO. She also stated that President Trump's hefty use of the term 'fake news' threatens the livelihood of healthy discourse within a democracy.

Although the journalists group has realized that their trademark application shall probably not get approved on two words that have been a part of the media lexicon for quite a while now, the application process indeed gives them a reason to send cease and desist letters to anyone who takes liberties with the definition of the term 'fake news.' Moreover, they have already sent a cease and desist order to the commander-in-chief, whom they believe uses the term on an average of more than once per day.

The cease and desist letter to Trump reads in part, "Referring to factual stories that are critical of your administration as FAKE NEWS (TM pending) is indeed Trademark Infringement." The letter also mentioned that Trump's misuse of the term ‘fake news’ has created confusion in the minds of American people and has shaken their trust in journalism, which is undoubtedly vital to their democracy. Besides, the letter allegedly stated that if Trump fails to comply with their request, they may pursue legal action. At last, The Florida Pro Chapter of the Society of Professional Journalists explained to the president that the letter, which he or his staff was receiving shouldn't be taken too seriously, as it was just a satire that is way too different than what he refers to as 'fake news.'

According to Emily Bloch, she has been harassed, ridiculed, and threatened ever since she became a journalist in the year 2016. She blames President Trump's incendiary rhetoric for fueling antipathy toward reporters and journalists.

The Florida Pro Chapter of the Society of Professional Journalists hopes that their trademark application causes the American people to consider the downside of living in a society that isn't capable of differentiating between propaganda and information. They even created a video to introduce their applied-for trademark and launched a website called 'Fake News TM' that will help the public in knowing which stories are real and which ones are not.

Ref- https://www.kashishworld.com/blog/spj-florida-pro-chapter-attempts-to-trademark-trumps-fake-news-mantra/

Malaysian Entrepreneurs Will Soon Have Access To Worldwide Trademark Protection

As per the newly-amended Trade Marks Act 2019, Malaysian entrepreneurs who file their trademarks under the Intellectual Property Corporation of Malaysia (MyIPO) will soon have access to worldwide Trademark Protection. Datuk Seri Saifuddin Nasution Ismail, the Minister of Domestic Trade and Consumer Affairs, announced the news on 23rd October 2019 by stating that this step aims at safeguarding the local entrepreneurs' brands and companies from being imitated worldwide. He mentioned that Malaysia has indeed seen cases, where well-established local products were imitated since they weren't trademarked by the trademark holder, and implementing this Act will prevent the occurrence of similar cases. He further said that the new Trade Marks Act 2019 shall allow entrepreneurs to trademark both non-traditional and traditional marks.

The previous Trade Marks Act of 1976 allowed entrepreneurs to trademark only traditional marks, including brands, names, labels, tickets, words, sentences, logos, signatures, or a combination of these. However, under the new Act, entrepreneurs can now file a Trademark Application for a range of other different marks like motion marks, sounds, holograms, patterns, positions, smells, shapes of products, etc.

The new Act also follows the recently-adopted Madrid System Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), adopted in Madrid on 27th June 1989. The Madrid System has Malaysia as its 106th member. Other ASEAN countries acceding to the protocol include Indonesia, Singapore, Vietnam, Thailand, the Philippines, Cambodia, Laos, and Brunei. The Madrid System allows these countries to safeguard their brand in 122 countries, including Australia, the United Kingdom, Brazil, and the United States of America. Trademark owners in Malaysia would need to file only a single trademark application with MyIPO to register or file their local brands in the countries, which are a part of the Madrid System.

The Madrid System is an international treaty which is administered by the International Bureau of WIPO (World Intellectual Property Office). It allows the owners to seek trademark protection in several countries simultaneously by filing a single trademark application with a single office, that too in just one language, and by paying the fee only once.

Malaysian entrepreneurs can register their brands as trademarks under the new Trade Marks Act 2019, starting from 27th December 2019. MyIPO expects to have somewhere around 4000 new Trademark Registrations coming in the month of December. Saifuddin has also urged the entrepreneurs to register their brands or companies under the new Act as it will benefit them in many aspects, including customer loyalty and brand sustainability. Furthermore, the Customs Department will also be given the due authority to block the entry of counterfeit goods and products under the names of local entrepreneurs and notify the concerned authorities of the matter.

The new Trade Marks Act 2019 has also laid down more severe punishments for the offenders and the ones getting involved in Intellectual Property Infringement. People getting involved in Trademark Infringement can be fined up to RM1 million, jailed for a maximum of five years, or probably both.

Ref- https://www.kashishworld.com/blog/malaysian-entrepreneurs-will-soon-have-access-to-worldwide-trademark-protection/

Trademarks in the World of Advertising

Whether you are planning to launch a marketing campaign or come up with new advertising, you are potentially opening yourself to trademark liability. In the present fast-paced economy and highly-competitive business world, business firms and companies are highly proactive of their unique creations and Intellectual Property (IP) and never hesitate to initiate legal proceedings against anyone who uses their registered words, symbols, logos, or slogans and infringes on their Registered Trademarks.

Nowadays, the stakes of spending an enormous amount of money on an advertising campaign and then receiving a 'cease and desist' order within a few days of launching it are way too high. Therefore, it has become essential to reduce the chances of receiving one of those dreaded legal letters and increasing your brand awareness by significantly analyzing and clearing your potential trademarks.

Without any doubt, there shall always be some risk involved in launching new advertising and marketing campaigns. Whether it relates to a wide-scale printing advertising campaign or a small-scale social media campaign, business companies and owners keep on monitoring each other for potential Trademark Infringement. The issue here is, even if your company or business isn't violating or infringing on some other company's Trademark Rights, just the mere expense of fighting a lawsuit can be more significant than the costs of scrapping the marketing or advertising campaign and starting fresh.
So let's make ourselves familiar with a few practices that companies can use to avoid the pitfalls in which they may fall while coming up with a brand new advertising campaign.

1- Make Sure to Analyze and Examine your Trademarks by Performing a Clearance Search

When you decide to launch a new marketing campaign, you must begin by analyzing what distinctive elements of your campaign potentially implicate the Trademark Law. Many people across the globe aren't aware of the fact that along with words and logos, even the sounds, colors, and movements can be registered as trademarks and obtain Trademark Protection if they are capable of uniquely identifying a single company or source. Besides, it is imperative to know that descriptive and generic phrases or words are least likely to obtain trademark protection, until and unless a company has spent a massive amount of time and money in associating all customer recognition to that one brand. For instance, the phrase 'American Airlines' is descriptive; however, there is only one American Airlines®. On the other hand, phrases or words that may require an additional step to connect with the products or services can be registered as trademarks, such as Mr. Clean, for cleaning solutions. After identifying the potential trademarks, you must look forward to performing a comprehensive Trademark Search to come across any company already using something identical for related products or services.

2- Always Review your Use of Someone Else's Intellectual Property

Comparative advertising is indeed a powerful and efficient tool for making your brand, product, or service stand out. There is an entire law surrounding the issue of fake advertising; however, under trademark law, it is necessary to be aware of the fact that you have certain strict limits concerning the use of someone else's trademark in your advertising campaign. The crucial factor here is whether your use of the trademark is likely to create confusion in the minds of the customers or not.  Additionally, you should also be very careful while using another person's images, artistic works, or drawings without their legal permission as such works are protected under Copyright Law.

3- Don't Forget to Monitor the Marketplace

Monitoring the marketplace yourself to ensure that nobody is improperly using your trademarks is of utmost importance. If another company's or individual's trademark is similar to your registered trademark, then your brand and business can suffer through irreparable harm and lose its strength. For instance, the same name for two different products, like 'Dove' chocolate and 'Dove' soap shall significantly reduce the distinctiveness for both the brands.
Ref- https://www.kashishworld.com/blog/trademarks-in-the-world-of-advertising/

Adidas Loses Trademark Infringement Lawsuit to Japanese Footwear Brand

Following a Trademark Infringement battle loss over its three-stripe logo just a few months ago to Shoe Branding Europe BVBA; Adidas has once again lost its rights to prevent others from registering 2-stripe trademarks, at least not in Japan. The Japan Patent Office (JPO; the national Intellectual Property (IP) body of Japan) has recently dismissed Adidas' attempt to invalidate Marubeni Footwear's Trademark Registration for a diagonal 2-stripe trademark.

Last year in April, Adidas went to the JPO for getting Marubeni's registration canceled claiming, that by registering the 2-stripe trademark, the Tokyo-based footwear brand wants to take advantage of its well-acclaimed and iconic 3-stripe registered trademarks. In its filing, the German sportswear giant also stated that Marubeni's 2-stripe trademark would give the buyers the same impression as to its 3-stripe trademarks since each stripe is in the same direction, and of the same shape and width, besides the stripe count difference. For the one stripe difference, Adidas argued by saying that it has been substantially using its famed 3-stripe mark since the early 1950s, that too, in various configurations, length, and colors, and an average customer would associate Marubeni's 2-stripe mark with its 3-stripes. Furthermore, Adidas also asserted that the space between the stripes of different colors in the 2-stripe mark could easily appear to be three stripes, which it fears the relevant customers would confuse for its shoes.

However, the JPO's Opposition Board felt differently in this matter and gave a judgment in favor of Marubeni by saying that although there is a high degree of popularity and reputation associated with Adidas' 3-stripe trademark, an average customer shall never mistake two stripes for three stripes while purchasing shoes. Coming to Adidas' argument of the use of two stripes with a contrasting space, which may appear to be three separate stripes, the Opposition Board was unconvinced and said that the mark has only two stripes and the issue of spacing is not relevant in this particular case.

Keeping everything in mind, the Opposition Board dismissed Adidas' Trademark Opposition proceedings and held that Marubeni's trademark registration would continue to remain valid.

Ref: https://www.kashishworld.com/blog/adidas-loses-trademark-infringement-lawsuit-to-japanese-footwear-brand/