Registration Is Not Required

• Some trademarks are stronger than others.gorilla image by Lucy Clark from Fotolia.com
  
  It is not necessary in the United States, or in common-law jurisdictions in general, that a plaintiff show that it has registered the trademark in question. Legitimate use is sufficient to create a "protectable interest." But registration helps establish a "strong" mark, which can become an issue in litigation.
  
  

Same Mark in the Same Market

• An important precedent involves the sale of flour.backform image by FotoLyriX from Fotolia.com
  
  It is easiest to make a case for an infringement in cases in which the newer user of the same trademark is competing in the sale of the same product or service as the older user.
  
  In 1882, the flour merchants Holt & Co. registered the name "La Favorita" as a trademark for their flour. A former member of Holt & Co., Stephen O. Ryder, left the firm and went into the flour trade on his own. He also used the term "La Favorita."
  
  In Menendez v. Holt (1888), Chief Justice Fuller wrote for the U.S. Supreme Court: "The intentional use of another's trademark is a fraud....Persistence then in the use is not innocent, and the wrong is a continuing one, demanding restraint by judicial interposition when properly invoked."
  
  

Same (or Similar) Mark in Different Markets

• It is crucial to understanding the significance of Menendez v. Holt, that Ryder, after leaving Holt & Co., continued to trade within the flour market.
  
  The question of when one firm's use of a trademark infringes on the rights of another in the absence of direct competition between them is often far from clear cut.
  
  

A Mid-20th Century Precedent

• Defendant said "rad" stood for "radio."Radio image by Ewe Degiampietro from Fotolia.com
  
  One important precedent in the development of trademark law over recent decades was Polaroid Corp. vs. Polarad Electronics Corp..
  
  Polarad was organized in December 1944 to sell microwave generating, receiving and measuring devices and television studio equipment. Polaroid was already well known, chiefly for glasses and polarizing filters. In response to a lawsuit by better-known Polaroid, defendant claimed that the "Po" in "polarad" came from the initials of its founder, Paul Odessey, that the second syllable came from the beginning of the first name of Odessey's friend, Larry Jaffe, and that the "rad" simply symbolized radio.
  
  

The Defendant Won

• Several factors come into play in litigating such a conflict as Polaroid vs. Polarad. The exact list of the factors varies from one circuit to the next, and the respective weight of its different elements can vary from one case or judge to another. In general, though, courts will take into account:
  
  a) how similar the products or services are that the plaintiff and the defendant sell;
  
  b) how "strong" the plaintiff's mark is--whether it is registered, whether it is arbitrary (the more arbitrary and less descriptive, the stronger), the more widely it is recognized;
  
  c) whether the products or services have overlapping customer bases--or marketing "proximity," as courts sometimes call this;
  
  d) and whether the defendants acted in good fact.
  
  The Second Circuit in 1961 upheld the district court, which had held in favor of defendant Polarad.