Trademark violation for use of the name “SafePack”
Following Safe Choices’ recent letter to us expressing their concerns on our use of the
name ‘SafePack’ on our biodegradable packing materials, I have carried out an assessment of the
matter to determine whether our use of the name ‘SafePack’ is an infringement of Safe Choices’
The Lanham Act (The Trademark Act of 1946) protects the exclusive rights of an owner
for using a trademark. A trademark simply refers to a logo, phrase or which used for indentifying
the origin of services or goods. Trademarks, unlike patents and copyrights, may enjoy protection
under federal law, state law or both. Infringement of trademark under the Lanham Act for either
an unregistered mark or a registered mark occurs when another party uses the mark for purposes
of identifying goods or services, causing a likelihood of confusion in line with the association,
connection, or affiliation of the claimant with the defendant. To succeed in an action for
infringement of trademark, the claimant has to prove that it has a valid mark to be protected.
Three basic elements for establishing a trademark infringement claim include: “use”, “in
commerce” and “likelihood of confusion” (Howard, Kerin & Gengler, 2000).
The claimant is required to establish the element of “use”. This element acts as a limiting
factor in the sense that it prevents a trademark holder from claiming a general right to regulate
language. Acts which indicate a producer’s intention to capitalize on the recognition of the name
of the competitor do not constitute use in light of a trademark violation claim. To establish the
element of ‘in commerce’, the claimant is supposed to show that the alleged infringing acts have
the potential to substantially affect interstate commerce. Acts that constitute ‘in commerce’
elements include: moving goods that near an infringement mark from one state to another,
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moving products to another state with the intention of registering a trademark, or making adverts
that have interstate distribution.
The ‘likelihood of confusion’ element plays a central role in trademark infringement
claims. The standard used in determining the likelihood of confusion between the defendant’s
trademark and the claimant’s trademark is the Lapp Test. A likelihood of confusion occurs where
the defendant’s trademark indicates the likelihood of causing a significant number of reasonable
consumers to be confused with regard to the origin or source of the services or goods they are
used to identify.
The Lap Test is applied in assessing the likelihood of confusion (Howard, Kerin &
Gengler, 2000). The factors for establishing the likelihood of confusion include: similarity of the
marketing, evidence of actual confusion, the intention of the defendant in using the mark,
consumer sophistication when making a purchase, strengths of the mark of a plaintiff, and
similarity of the marks. These factors were established in the landmark case of Interpace Corp v
Lapp Inc., 721 F.2d 460 (3d Cir.1983). These factors are not exhaustive and they may not all be
applicable to one case because their assessment depends on the circumstances of each particular
case. As long as the products in question are sufficiently dissimilar, it is possible for a trademark
not to be infringed yet the same identical mark is being used within the same geographical
location (Cosgrove & March, 2011).
To establish the liability of Simply Green Products liability with regard to product to
product infringement, it is important to assess our mark in terms of the three requirements: “use”,
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use the name “SafePack” in the sense that it viewed Safe Choices as a competitor and the need to
capitalize on the recognition of the name from Safe Choices’ perspective. Simply Green Products
used the name “SafePack” in the sense that it wanted to show that its packing products were
biodegradable and thus environmentally friendly.
With regard to the ‘in commerce’ requirement, the mark is advantageous to Simply Green
Products due to the fact that it shows our commitment to the environment. Thus, the heavy
advertisements we have been undertaking in trade journals are merely to promote our line of
business and not to cause any commercial injuries to Safe Choices.
In light of the likelihood to cause confusion, the major factors to be assessed in this case
include the similarity of the products and the intention of Simply Green Products in adopting the
name “SafePack”. Though the trademark is the same, the products are different. Simply Green
Products deals in packing materials for use in the transportation of fruits, while Safe Choices
deals in emergency weather kits. These two products are very different and no customer would
go for fruit packing materials instead of emergency weather kits in the name of confusion. The
intention of Simply Green Products was to promote an eco-friendly environment and not to
confuse customers as to the purchase of Safe Choices’ weather kits.
I believe that the continued use of the name “SafePack” will not lead to the violation of
the Lanham Act because there is no way in which Simply Green Products intends to cause
confusion to consumers with regard to Safe Choices’ emergency weather kits. The court in Web
Printing Controls v Oxy-Dry Corporation (1990) held that it is important for the plaintiff to
show the likelihood of confusion in order to obtain the remedy of an injuctive relief. However,
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since there is no likelihood of confusion in this case scenario, Safe Choices may not win an
action against Simply Green Products for violation of the Lanham Act. However, there are still
challenges posed by the use of the internet in advertisements which have made it difficult for
courts to assess the element of “likelihood of confusion” (Bryce, 2000).
It is my opinion that you refer this case to our company’s outside lawyer to reconsider the
matter and see whether it is possible to contact Safe Choices and request them to come to board
for negotiation. If Safe Choices is not willing to have dialogue, then the counsel can prepare for
defense in case the matter reaches to court.
Bryce, M. J. (2000). The initial interest confusion doctrine and trademark infringement on the
internet. Washington and Lee Law Review, 57(4): 1303-1352.
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Cosgrove, M. & March, D. (2011). Case Study: Trademark Infringement Issues. Journal of
Business Case Studies, 7(2):19-26. Kerin R. & Gengler, C. (2000). The effects of brand name similarity on brand
source confusion: Implications of trademark infringement. Journal of Public Policy &
Marketing, 19(2): 250-264.