The determination of likelihood of confusion is a multi-factor test, sometimes depending upon 10 or more factors. A key consideration is whether the goods and services are closely related or not. For example, one party can use the mark “domino” in association with pizza, while another party can use the mark “domino” in association with sugar because the goods are not closely related.
Dilution also utilizes a multi-factor test. However, there does not need to be a showing that the goods are related.
Dilution may be shown by blurring or tarnishment. Blurring occurs when a party’s use threatens to weaken the association of another party’s mark and goods essentially through overuse of the mark. Tarnishment occurs when a party is using the mark at issue in a negative or scandalous manner, and that use threatens to create a negative association with another’s mark. In dilution cases, the mark at issue must be famous.
There are six types of defenses to a trademark-infringement action. These defenses can be procedural, substantive affirmative defenses or equitable defenses. These defenses can also involve asserting that the plaintiff cannot prove one of the three elements of its claim.
The remedies for infringement can include damages, enhanced damages, seizure of the infringing products and injunctions (both preliminary and permanent). The court may also order the USPTO to correct the register in certain cases so that the party asserting its trademark can lose its mark.