Question
The United States Patent and Trademark Office (USPTO) defines trademark infringement according to three rules: Trademark infringement is the unauthorized use of a valid, trademarked
The United States Patent and Trademark Office (USPTO) defines trademark infringement according to three rules:
- Trademark infringement is the unauthorized use of a valid, trademarked piece of intellectual property. Thus, if the user has permission from the trademark holder (especially in the form of a contract, typically called a license), it's not infringement.
- The mark must be used on, or in connection with, goods and/or services. The type of good or service matters a great deal as well. It's very difficult to infringe on trademarks in a completely different industry or type of business.
- The mark must be used in a way that is likely to cause confusion among customers. Many trademark infringement cases come down to determining this "likelihood of confusion."
If a case fulfills all three of these requirements, the court is likely to rule that the use of the mark is infringement.
Courts have developed factors to determine whether the mark is being used in a way that is likely to cause confusion among customers. Many trademark infringement cases come down to determining this "likelihood of confusion."
In January 2016, Starbucks filed a lawsuit against the parent company of New York's Coffee Culture Cafe for launching a drink called the "Freddocino" The lawsuit's documents allege that not only does the drink appear similar to the Frappucino, the structure of the name contains enough similarities to cause "confusion in the marketplace" and diminish "Starbuck's brand equity."
Starbucks does own the trademark for the term Frappucino, and additionally alleged that Coffee Culture has created deceptive packaging to make it appear the term "Freddocino" is trademarked when it is not. While Coffee Culture Cafe has changed the name of the drink to a "Freddo," Starbucks is proceeding with the lawsuit.
You are an associate at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP representing Starbucks and have been assigned to do caselaw research on Lexis, Westlaw and USPQ on Bloomberg Law to find the most analogous cases applying the factors of the test for likelihood of confusion.
Discuss the development of your caselaw research strategy that incorporates controlled (e.g. topics and key numbers) and uncontrolled keyword (Boolean and natural language/AI searches as well as the use of field searching). You are not being asked to perform the research at this point - just develop the strategies, understanding that all legal research is an iterative process. USE AWLD. (FIND CASES FROM EACH ONLINE PLATFORM AND SHOW HOW YOU FOUND THEM)
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