Many people think if you own a trademark registration with the USPTO, then you can claim trademark rights for that mark in connection with all goods and services under the sun – that the owner of a trademark owns the right to use it however they want. Conversely, some sophisticated businesspeople believe that they cannot use a particular trademark simply because someone else is using a same or similar trademark. While that is sometimes true, it is only true if such use would cause confusion amongst consumers in the marketplace.
A somewhat entertaining recent case illustrates this concept. The owner of a company that sells tackle and other fishing gear and supplies called Land O’Lakes recently sued the well-known dairy company of the same name for trademark infringement alleging that the use of Land O’ Lakes on butter and other products was causing consumer confusion with their use of the trademark in connection with fishing tackle and related products. The Northern District of Illinois rejected that notion, hook line and sinker (pun intended), stating that it was highly unlikely that anyone would confuse a relatively small tackle company with the large dairy company. See, James G. Hugunin, Land O’ Lakes Outdoors, Inc. et al. v. Land O’Lakes, Inc., Seventh Cir. No. 15-2815, issued March 1, 2016.
While it is not surprising that the court did not find a likelihood of confusion between butter and fishing tackle, it does bring to the light a couple common trademark misconceptions: (1) I own it for all things and (2) I can successfully stop others from using that trademark for any other good or service, no matter how unrelated.
Clients ask all the time – If I have this “trademarked” (and usually they mean the moment they apply for a trademark registration) then other people cannot use it, right? Nothing could be farther from the truth. While unfortunate, the law cannot prevent anyone from doing anything. At best, though, if you own strong rights in your trademark in your area of goods and services, then if someone uses a similar mark for similar goods or services, you may be successful at stopping them (through an injunction) or otherwise recovering damages (money) from them. A party that has taken the time to protect and use their trademarks correctly is much better suited to enforce their rights against others.
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