Musician Bob Dylan’s whiskey company, Heaven’s Door Spirits, is being sued by Heaven Hill Distillery. In April, Heaven Hill sent Heaven’s Door a cease-and-desist letter claiming that the logo used by Heaven’s Door resembled their own. Heaven’s Door did not comply with the cease-and-desist and a lawsuit was filed by Heaven Hill on Friday in U.S. District Court in Louisville.
Trademark infringement is the use of a trademark on similar products or services without authorization from the owner. Infringement depends on whether or not the use of the trademark causes confusion for the average consumer. Courts use a “likelihood of confusion test” to help decide if trademark infringement has occurred. Here are eight ways that a court is most likely to determine the case.
Senior Mark
The court will determine the strength of the senior mark (the first to be registered or used). The more distinct a mark is, the greater the strength.
Relation
Will the consumer be able to make a connection between the two products? Cases typically fall into one of these three categories:
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Direct competition
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Related but not competitive
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Unrelated
Similarity
Will the mark be confusing to the consumer when viewed outside of the product or service? The mark will be looked at in its entirety to see if the similarities are great enough to confuse the consumer.
Evidence of Confusion
The court will take into account any cases in which consumers were confused in market context.
Marketing Channels
A court will look at where the businesses advertise and their proximity to each other in stores.
Purchaser Knowledge
If a product is expensive or unique, customers typically do more research and will be able to make distinctions between brands. Distinctions between cheaper, more common products are more likely to be overlooked.
Intent of the Mark
If the mark was chosen by the defendant based on its similarities, it is likely that it is trademark infringement. The intent shows that the defendant hoped to create confusion with the consumer.
Product Expansion
Is either party looking to expand their market or product line to compete with the other? Either a geographic expansion or product line expansion of one business could rule in favor of trademark infringement.
Are you covered for trademark infringement?
Check your commercial general liability insurance policy to see if it covers trademarks. It may be covered under “Advertising Injury”. Even if you have no reason to believe that your business has infringed on another, it is important to understand your coverage and be prepared for any lawsuits that may come your way.