How To Avoid A Trademark Infringement Dogfight
A New Jersey entrepreneur who sells organic dog treats under the label, “Snaks 5th Avenchew” has prevailed in her fight to keep the name after a short scrap with fashion retailer Saks Fifth Avenue.
Carrie Sarabella, who sells her organic dog treats online and direct to retailers, received a cease-and-desist letter from Saks threatening litigation if she continued to market and sell her products under the “Snaks 5th Avenchew” brand.
Instead of complying, Sarabella hired an intellectual property attorney who sent Saks a letter arguing that the name was valid under fair-use law that recognizes parody marks do not cause harm to established marks. He cited the examples of Tommy Holedigger, a pet perfume product, and Chewy Vuiton, which makes dog chew toys, both of which prevailed in infringement suits against the brands they parodied, Tommy Hilfiger and Louis Vuitton.
Upon further review, Saks notified Sarabella that they would not pursue the matter. In this case, Sarabella was lucky that all it took was a letter from her attorney to keep the trademark infringement hounds at bay. If she had to defend her trademark in court, she could have potentially incurred significant costs that might even threaten the viability of her business.
Courts look at several different factors when considering whether or not a trademark has been infringed upon. These can include:
Similarity. Does the offending mark have a similar appearance, meaning or pronunciation? Do the products or services compete in the same consumer space?
Distribution. Does the offending mark use the same distribution channels as the original mark?
Confusion. Does the offending mark create confusion in the marketplace between it and the original mark?
Strength. Trademarks that are descriptive of the goods or services they represent are considered weak and therefore harder to defend, where marks that are fanciful or arbitrary (i.e., Google or Apple) are considered strong.
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