US trademark owners rightly are concerned about infringement and protecting their marks online. Such concerns bear on auction sites like eBay and user names chosen by its members. Fear not. US trademark law still applies. See, 15 U.S.C. §1051 et seq.
Problem: eBay user names and trademark infringement
Standard: Likelihood of confusion, deception, mistake regarding a member’s connection or affiliation, as well as the origin of goods and/or services.
Risk: Lost sales, marketplace confusion, brand perception issues, counterfeits and/or dangerous goods incorrectly associated with a business, increased liability if safety issues involved, lost or weak trademark rights, injury to business good will, increased warranty claims for unauthorized product.
When: An eBay member’s “user name” is used in sales, which user name is used in a confusingly similar manner to a US federally registered trademark and/or a trademark based in US common law, likely to create confusion of source of the sold goods.
When goods or services produced or offered by an alleged infringer compete for sales with a trademark owner, infringement usually will be found if the marks are sufficiently similar that confusion can be expected. When the goods are related, but not competitive, several factors are considered. If the goods are totally unrelated, confusion may be unlikely and there likely is no infringement. See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. Cal. 1979). Courts consider goods related where consumers reasonably would think products come from the same source if sold under the same mark.” Standard Brands, Inc. v. Smidler, 151 F.2d 34, 37 (CA 2 1945). To determine likelihood of confusion, courts consider: 1. the mark’s strength; 2. proximity of the goods; 3. similarity of the marks; 4. evidence of actual confusion; 5. marketing channels; 6. type of goods and the degree of care likely exercised by purchasers; 7. defendant’s intent in selecting the mark; and 8. likelihood of expansion of the product lines.
Considering these factors and legal standards, one can see how one business could use the trademark DELTA for selling faucets while another uses the same mark for selling airline transportation services. Meanwhile, one can see how a party’s use of the mark BURGER KING on clothing would be infringing of the BURGER KING trademark owner’s rights from other uses due to the strength of the mark, among other factors.
eBay acknowledges that user names used in commerce on the site can constitute trademark infringement. eBay’s Verified Rights Owner (VeRO) Program allows trademark owners to alert it to such issues. So, the owner of the mark PET GOOD for dog food could file a VeRO complaint against an eBay member with the user name PETGOOD who sells pet toys on the site because there is a likelihood of confusion. eBay would consider the complaint, upon finding infringement that member’s user name could be revoked. Failing action by eBay, the rightful owner alternatively could seek justice from the court.
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