Trademark Infringement as a Cause of Action in New York

Trademark infringement is a claim that arises when one party uses another party’s name, logo, or symbol in a way that confuses consumers about the source of goods or services. In New York, state law gives businesses the ability to protect their marks from misuse by competitors. To succeed in court, a plaintiff must prove two main elements: that the mark is valid and protected, and that the defendant’s use is likely to cause confusion.

A Valid Mark Entitled to Protection

The first step in a trademark infringement case is showing that the plaintiff owns a mark that the law recognizes as worthy of protection. A trademark can be a word, phrase, logo, or even a combination of these elements that identifies the source of a product or service. To be valid, the mark must be distinctive enough to set it apart from other products or services in the market.

Some marks are considered stronger than others. A made-up word like “Kodak” is inherently distinctive, while a descriptive phrase may need to acquire recognition in the marketplace before it is protected. In practice, this means the plaintiff must prove that consumers associate the mark with their business, and that the mark is not so generic or common that anyone could use it.

Likelihood of Confusion

The second element focuses on whether the defendant’s use of the mark is likely to confuse consumers. The law does not require proof that confusion actually occurred, only that it is reasonably probable. Courts look at factors such as how similar the two marks are, how related the goods or services are, and the channels in which the products are sold.

For example, if two restaurants in the same city use nearly identical names and logos, customers could mistakenly believe the businesses are connected, which would create actionable confusion. On the other hand, if the marks are used in completely different industries with no overlap, the chance of confusion may be too remote.

Conclusion

Trademark infringement under New York law is built on a straightforward framework. The plaintiff must prove that its mark is legally valid and recognized, and that the defendant’s use is likely to lead consumers astray. These elements balance the rights of businesses to safeguard their identity with the need for fair competition in the marketplace. Ultimately, the goal is to prevent confusion and ensure that customers know exactly who is behind the goods or services they are choosing.

Find the Law

“In order to prevail on a cause of action for trademark infringement under state law, the plaintiff must establish: (1) that it has a valid mark entitled to protection and (2) that the defendant’s use of that mark is likely to cause confusion. See Killian v Captain Spicer’s Gallery, LLC, 140 AD3d 1764 (4th Dept. 2016).” Penthouse Glob. Media v. Exec. Club LLC, 2019 N.Y. Slip Op. 32140, 6-7 (N.Y. Sup. Ct. 2019)