Can a trademark that initially passed measures such as the “similarity” and “likelihood of confusion” tests later be considered infringing?
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Can a trademark that initially passed measures such as the “similarity” and “likelihood of confusion” tests later be considered infringing?
Say that one wants to issue a trademark that is similar to another: If the proposed trademark is not considered “confusingly similar” and passes through “Similarity” or “Likelihood of Confusion” tests and is subsequently issued, can it later be revoked? In other words, once a trademark is issued, can it later be revoked or considered infringing and subject to a lawsuit? Should there be any worry that the trademark could later be considered infringing and the party holding the trademark could be subject to a lawsuit?
Asked on September 4, 2011 under Business Law, Minnesota
Answers:
FreeAdvice Contributing Attorney / FreeAdvice Contributing Attorney
Answered 13 years ago | Contributor
Just because a state's secretary of state's office of the United State's Patent and Trademark's office has approved a trademark application of an individual as not being "confusingly similar" to any other registered trademark, there is always the possibility that another person could claim that the subsequent registered trademark is confusingly similar and infringes upon his or her product by being "confusingly similar".
However, when one receives state of federal approval of a trademark and there is litigation down the line by someone claiming that the subsequently registered trademark is confusingly similar, the prior approval eliminates any claims of malice and ill will typically claimed in such a lawsuit.
Just because there is approval for one's trademark, there is always the possibilty later on that someone can claim infringement leading to litigation.
Good question.
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