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90-Second Legal
Short, practical explanations of the legal questions business owners and creators ask most often, each in about 90 seconds. Presented by William C. Groh, III, a partner at LMB Partners.
02:00
90 Second Legal - Trademark Level 3 - Likelihood of Confusion Part 4 - Product Similarity
In this episode, we continue with trademark infringement, this time discussing the "consumer care" factor.
Bill Groh is a partner with LMB Partners with offices in Denver and Golden, Colorado. For more information, see https://www.lawmeetsbusiness.com/groh-william
TRANSCRIPT:
This is Bill Groh and welcome to 90 Second Legal. This is part of the multi-part series on trademark infringement or the likelihood of consumer confusion. Today we're going to talk about consumer care. Now, since trademark infringement is at its core about whether consumers get confused, courts are going to pay attention to how careful consumers of particular products or services actually are.
Courts assess consumer care by asking how careful a consumer of a particular product or service is going to be in making sure that they are buying the brand they think they're buying. Generally, the more expensive the product and the more essential the goods or services, the more careful the consumer will be.
Let's consider a product like bubblegum. There are a lot of brands, small differences between them. It's not expensive and it's a very dispensable product. If you buy a pack of gum you don't like, it's not that big a deal. The average consumer isn't going to pay that much attention to which brand of bubble gum they are buying.
Consumer care in this particular industry is going to be low. Now, something on the opposite end of the spectrum would be a high value product or service like a luxury car or a medical treatment. You're spending a lot of money or it's an important transaction. The average consumer in that situation is going to take more time to make sure that they are really buying what they think they are buying.
The consequences of going to the wrong doctor are potentially a lot greater than buying the wrong bubblegum for that reason. The higher the consumer care, the less likelihood of consumer confusion. That said, remember, the consumer care is just one of several factors in determining consumer confusion and potentially trademark infringement.
So, you can still have consumer confusion, even if consumer care is high. For more information, check out the links below and click that subscribe button for more 90 Second Legal content.
01:42
90 Second Legal Trademark Level 3 Likelihood of Confusion Part 4 Product Similarity captioned
In this episode, we continue with trademark infringement, this time discussing the "product similarity" factor.
Bill Groh is a partner with LMB Partners with offices in Denver and Golden, Colorado. For more information, see https://www.lawmeetsbusiness.com/groh-william
TRANSCRIPT:
This is Bill Groh and welcome to Ninety Second Legal. This is part of a multi-part series discussing different factors the courts use to test whether trademark infringement is occurring or if there's a likelihood of consumer confusion. Today we are going to focus on the product similarity prong. The more similar the product, the more likely consumers are to be confused.
But what do courts specifically consider when they evaluate this factor? One issue is whether the marks in question are advertised in similar markets to similar classes of consumers. For example, if a product or service is advertised to a niche market, that may be less likely to get confused with a product that is just marketed to the general public as a whole.
Another issue is whether the marks are marketed in similar channels. Are the products showing up in the same stores? Do they both run ads on Facebook or Google or on tv? The more the marketing strategies and channels overlap, the more it will be a source of potential confusion. Finally, however, we have product similarity itself.
Now, obviously, marketing very similar products with very similar marks will be a potential source of confusion. However. That does not mean that marketing a completely different product alone will prevent a trademark infringement claim, especially if the infringed mark is well-known and the advertising falsely suggests an affiliation with a well-known brand.
For more information, check out the links below and click that subscribe button for more Ninety Second Legal content.
01:43
90 Second Legal - Likelihood of Confusion Part 2 - Mark Similarity
This episode contines our multi-part series on trademark infringement.
Bill Groh is a partner with LMB Partners with offices in Denver and Golden, Colorado. For more information, see https://www.lawmeetsbusiness.com/groh-william
TRANSCRIPT:
This is Bill Groh and welcome to Ninety Second Legal. This is part of a multi-part series discussing different factors the courts use to test whether trademark infringement is occurring or if there's a likelihood of consumer confusion. Now, today we are going to talk about mark similarity. This may seem like one of the more obvious factors courts will use to determine infringement.
It would seem that the marks are either similar or they aren't, but there are some tricks to it. Courts evaluate similarity by examining three things, sight, sound, and meaning. They don't consider the individual components of the marks. Instead, they try to look at the marks holistically and in a way that an ordinary consumer in the marketplace would actually encounter those marks.
So if there are two marks which have a common or similar component, like say "Peak Logic" or "Peaks Computing," the court won't just focus on whether "Peaks" and "Peak" are similar. The court will consider whether "Peak Logic" is similar to "Peaks Computing". Now, this means that two different trademarks could have a similar syllable or word or component, but the marks as a whole could mean something very different, or they could sound or look different enough so that that one common component doesn't end up mattering that much.
Now remember, mark similarity is considered along with other factors, so strong or weak mark similarity won't necessarily make or break a claim for actual confusion. For more information, check out the links below and click that subscribe button for more Ninety Second Legal content.
01:54
90 Second Legal - Trademark Level 3- Likelihood of Confusion Part 1: Actual Confusion
This is the first part of a multi-part series dealing with the ins and outs of likelihood of confusion and trademark infringement.
TRANSCRIPT:
This is Bill Groh and welcome to 90 Second Legal. This is part one of a series discussing different factors the courts use to evaluate whether trademark infringement is occurring or if there is a likelihood of consumer confusion. Courts figure this out using several factors, which they will weigh differently depending on the situation.
Today we're gonna discuss the first and most obvious factor, actual confusion or whether consumers are actually getting confused. Courts usually give this the most weight, and it's easy to see why. If consumers are mistaking one trademark for another, that's good evidence that the marks are confusingly similar.
Now proving trademark infringement by showing consumer confusion has to involve more than a few anecdotal examples. Showing that it happened once or twice is generally not going to do it, especially if the mark and the infringing mark have been around for a while. The longer the marks have been used in the same market, the more courts will wanna see evidence of actual confusion.
Sometimes you have situations where one mark is just entering a marketplace or hasn't really taken off yet, so there hasn't been enough opportunity for consumers to get confused in those situations. You can use survey evidence. This is generally expensive and it involves hiring a survey expert. They try to present the marks to the type of consumer who may buy the product or service, and then evaluate how often the survey participants are actually getting confused.
Now, for this type of evidence to work, the survey expert's methodology has to be sound enough for a court to accept it. That makes this a more expensive option, but it can lead to compelling evidence of actual confusion in circumstances where the marks haven't been at odds long enough for that to have happened naturally.
For more information, check out the links below and click that subscribe button for more 90 Second Legal content.
02:01
90 Second Legal - Trademarks Level 1 - What is a Trademark?
What is a trademark and what does trademark law do?
This is a "Level 1" video where we take an introductory look and cover some of the basics.
Bill Groh is a partner with LMB Partners with offices in Denver and Golden, Colorado. For more information, see https://www.lawmeetsbusiness.com/attorneys/william-c.-groh%2C-lll
Transcript:
This is Bill Groh, and welcome to 90 Second Legal. What is a trademark? In a nutshell, a trademark is a specific brand identity. It's something that identifies your goods or services in such a way that a consumer can distinguish them from someone else's goods or services. It could be a name, a symbol, a sign, some words, or even a short phrase.
It's basically a brand. Now, trademark law is tricky because it has to balance a few things. On one hand, it needs to prevent consumers from getting confused or misled about whose goods or services they are buying. That means it has to protect trademarks from infringement. But also, trademark law can't allow businesses to monopolize ordinary or generic terms by trademarking them.
That would prevent other businesses from using basic terms to describe their services. Trademark law can't allow that either. So how do you strike a balance? One important key to this whole thing is the strength of the trademark itself. The stronger the mark, the less that trademark law will tolerate the use of similar marks, as that will be more likely to confuse consumers.
For example, on one hand, a brand like "Denver Restaurant" is a very weak mark. It simply describes a restaurant in Denver. Descriptive brands like that typically don't get trademark protection. Trademark law won't allow someone to monopolize the term "Denver Restaurant" because that would interfere with the ability of other "Denver Restaurants" to use that term while advertising.
On the other end of the spectrum, you can have marks which are otherwise nonsense and clearly don't relate to anything else, like Spotify or Skype. Those are strong marks. And these types of marks typically get the strongest protection. Not just against others using those particular marks, but also against anyone using anything confusingly similar.
For more information, check out the links below and click that subscribe button to get more 90 Second Legal Content.
02:02
90 Second Legal - Trademark Level 1 - What is Trademark Infringement Captioned
This is a "Level 1" video where we take an introductory look and cover some of the basics.
Bill Groh is a partner with LMB Partners with offices in Denver and Golden, Colorado. For more information, see https://www.lawmeetsbusiness.com/groh-william
TRANSCRIPT:
This is Bill Groh, and welcome to 90 Second Legal. What is trademark infringement? Trademark infringement occurs when you use someone else's brand without their permission and in a manner that causes consumers to get confused about what they are buying. An obvious example would be starting a car company and branding your car as BMW, even though you aren't making BMW cars.
That type of infringement happens sometimes, where somebody intentionally rips off somebody else's trademark. A much more common scenario, however, involves two businesses using trademarks which aren't the same, but are similar enough so that consumers may get confused. Sometimes that type of infringement is intentional and sometimes it isn't.
Either way, the key is likelihood of confusion. How likely is it that a consumer will mistake your product or service for somebody else's and buy it by mistake? To figure this out courts look at several interrelated questions. Some of those questions have to do with how distinctive and strong the marks in question actually are.
The analysis also involves looking at the markets where the marks are being used. Are the trademarks in question well recognized in the marketplace? Are they associated with similar goods and services? Is the average consumer of those products likely to get confused? Is there evidence available showing that consumers are actually getting confused?
These questions all bear on whether a court will find likelihood of confusion. Now, no single one of the above questions will decide the issue, however, evidence of actual confusion is generally the most important factor, especially when the infringement has gone on long enough and in the same market for a court to expect that type of evidence to be available if the infringement is actually causing problems.
For more information, check out the links below and click that subscribe button for more 90 Second Legal content.
02:20
90 Second Legal - Trademark Level 1 - Trademark Strength
This is a "Level 1" video where we take an introductory look and cover some of the basics.
Bill Groh is a partner with LMB Partners with offices in Denver and Golden, Colorado. For more information, see https://www.lawmeetsbusiness.com/groh-william
TRANSCRIPT:
This is Bill Groh, and welcome to 90 Second Legal. Today, we are going to talk about trademark strength. Now, it's best to think of trademark strength like a "shadow" that the trademark casts, and that shadow covers not only the trademark itself, but also other marks that are confusingly similar. The stronger the mark, the bigger the shadow.
That means that the mark doesn't have to be as similar before consumers start getting confused. If it's a weak mark, there may be little to no shadow at all, which means another mark would have to be quite similar before a court would consider that mark to be infringing. Now, there are two main kinds of trademark strength.
There's commercial and conceptual strength. Commercial strength basically refers to how well the mark is known in the marketplace. That's usually a function of the business advertising, how long they've been in business, and how much competition they've had. Conceptual strength deals with the mark itself and falls into five categories from weakest to strongest.
There's generic, descriptive, suggestive, arbitrary and fanciful. Now generic marks don't get protection under any circumstances. Descriptive marks also generally don't unless they've acquired a lot of commercial strength and then you have your suggestive and arbitrary and fanciful categories which each have more and more conceptual strength.
I'll go back to restaurants again for some examples of this. So, generic marks would simply name the type of business, like "Restaurant". Descriptive marks say, basically, they describe something about the business, like maybe "Denver Home Style Restaurant". Also still pretty weak. Suggestive marks will convey a characteristic of the business, but are more creative, something like "Cast Iron Kitchen".
Arbitrary marks involve unrelated words or names like "Applebee's" and finally fanciful marks involve completely made-up words like "Qdoba". Bottom line, the more commercial and conceptual strength the mark has, the bigger the "shadow" and the more dissimilar another mark will need to be in order to avoid infringing it.
For more information check out the links below and click that subscribe button for more 90 second legal content.
01:54
90 Second Legal - Trademark Level 3- Likelihood of Confusion Part 1: Actual Confusion
This is the first part of a multi-part series dealing with the ins and outs of likelihood of confusion and trademark infringement.
TRANSCRIPT:
This is Bill Groh and welcome to 90 Second Legal. This is part one of a series discussing different factors the courts use to evaluate whether trademark infringement is occurring or if there is a likelihood of consumer confusion. Courts figure this out using several factors, which they will weigh differently depending on the situation.
Today we're gonna discuss the first and most obvious factor, actual confusion or whether consumers are actually getting confused. Courts usually give this the most weight, and it's easy to see why. If consumers are mistaking one trademark for another, that's good evidence that the marks are confusingly similar.
Now proving trademark infringement by showing consumer confusion has to involve more than a few anecdotal examples. Showing that it happened once or twice is generally not going to do it, especially if the mark and the infringing mark have been around for a while. The longer the marks have been used in the same market, the more courts will wanna see evidence of actual confusion.
Sometimes you have situations where one mark is just entering a marketplace or hasn't really taken off yet, so there hasn't been enough opportunity for consumers to get confused in those situations. You can use survey evidence. This is generally expensive and it involves hiring a survey expert. They try to present the marks to the type of consumer who may buy the product or service, and then evaluate how often the survey participants are actually getting confused.
Now, for this type of evidence to work, the survey expert's methodology has to be sound enough for a court to accept it. That makes this a more expensive option, but it can lead to compelling evidence of actual confusion in circumstances where the marks haven't been at odds long enough for that to have happened naturally.
For more information, check out the links below and click that subscribe button for more 90 Second Legal content.
01:36
90 Second Legal - Colorado Noncompetes Level 1 - Employee Noncompetes
Colorado Rev. Stat. § 8-2-113 all but prohibits noncompetition agreements against former employees, with few narrow exceptions. The penalties for violating this statute can be substantial.
Bill Groh is a partner with LMB Partners with offices in Denver and Golden, Colorado. For more information, see https://www.lawmeetsbusiness.com/groh-william.
DISCLAIMER: The information provided in this video is for informational purposes only and is not intended to be, nor should it be construed as, legal advice. Watching this video does not create an attorney-client relationship, and the content should not be relied upon as a substitute for professional legal counsel. If you require legal assistance or advice, please consult with a qualified attorney who can address your specific legal needs.
02:03
90 Second Legal - Colorado Noncompetes Level 1 - What is a Trade Secret?
Colorado noncompetes can be enforceable if they are reasonably necessary to protect trade secrets, but what kind of information qualifies as a trade secret?
Bill Groh is a partner with LMB Partners with offices in Denver and Golden, Colorado. For more information, see https://www.lawmeetsbusiness.com/groh-william
DISCLAIMER: The information provided in this video is for informational purposes only and is not intended to be, nor should it be construed as, legal advice. Watching this video does not create an attorney-client relationship, and the content should not be relied upon as a substitute for professional legal counsel. If you require legal assistance or advice, please consult with a qualified attorney who can address your specific legal needs.
01:59
90 Second Legal - Colorado Noncompetes Level 2 - Confidentiality Clauses
The Colorado noncompete statute places limits on any confidentiality clause that may restrict a person's right to work.
Bill Groh is a partner with LMB Partners with offices in Denver and Golden, Colorado. For more information, see https://www.lawmeetsbusiness.com/groh-william
DISCLAIMER: The information provided in this video is for informational purposes only and is not intended to be, nor should it be construed as, legal advice. Watching this video does not create an attorney-client relationship, and the content should not be relied upon as a substitute for professional legal counsel. If you require legal assistance or advice, please consult with a qualified attorney who can address your specific legal needs.
TRANSCRIPT:
This is Bill Groh, and welcome to 90 Second Legal. Today, we are going to talk about confidentiality clauses. A confidentiality clause can be considered a non compete if it effectively restricts a person's right to work for an employer. Recent amendments to the Colorado Non Compete Statute discuss what kinds of confidentiality clauses are still permitted.
The Clause 1) has to be reasonable and relevant to the employer's business. 2) it can't prohibit disclosure of information coming from the worker's general training, knowledge, skill, experience, or information that is readily ascertainable to the public. And 3) it can't prohibit legally protected disclosures of information, like whistleblower statutes.
The first and third requirements are simple enough, but what about that second one? What about the language talking about general training, knowledge, skill, or experience? There aren't any Colorado cases directly addressing this yet. However, the language in the statute is a lot like Colorado trade secret law, which also does not protect generalized know how or experiences or publicly available information.
That kind of information isn't a trade secret. That can include an employee's subjective experiences, knowledge from general experiences, Information like the names of customers or pricing information if it can be found out through public sources. Even non-original secrets, like a design that isn't different from other publicly available designs.
Based on that, even though the statute doesn't actually say so, it pretty much requires a confidentiality clause to relate to an actual protectable trade secret. If it doesn't, the clause is probably void. For more information, check out the links below, and remember to click that subscribe button for more 90 Second Legal content.
01:57
90 Second Legal - Colorado Noncompetes Level 3 - Highly Compensated Workers and Time of Enforcement
The Colorado noncompete statute restricts the enforceability of employee noncompetes for the protection of trade secrets to "highly compensated workers", both at the time of entry into the noncompete and enforcement. But what constitutes "enforcement" under the statute?
This is a "Level 3" video where we take an even deeper look, analyzing important legal nuances that can affect how the law is interpreted.
Bill Groh is a partner with LMB Partners with offices in Denver and Golden, Colorado. For more information, see https://www.lawmeetsbusiness.com/groh-william
DISCLAIMER: The information provided in this video is for informational purposes only and is not intended to be, nor should it be construed as, legal advice. Watching this video does not create an attorney-client relationship, and the content should not be relied upon as a substitute for professional legal counsel. If you require legal assistance or advice, please consult with a qualified attorney who can address your specific legal needs.
TRANSCRIPT:
This is Bill Groh, and welcome to 90 Second Legal. The Colorado Non Compete Statute has an interesting provision governing when you can enforce a non compete intended to protect trade secrets. The employee has to be a highly compensated employee at two different times. One, when it is entered into, which is simple enough, and two, when the non- compete is actually enforced.
But what does "enforced" mean? A statute doesn't really tell us. The answer to this question matters because if the former employee is not highly compensated at the time of the enforcement, you can't enforce the non compete. So when does enforcement occur? Is it the date of a cease and desist? How about when a suit is filed or when a judge enters an order enforcing the non compete?
What if that order is a preliminary injunction? Does that count? Maybe the day a permanent injunction is entered. We don't know exactly. There was a recent holding where the District of Colorado looked at this issue briefly and issued an injunction to enforce a non compete. In that case, the court determined the employee was highly compensated when the non compete was entered into, as well as on the last day of the employee's employment with the plaintiff.
Now the parties didn't dispute this issue, so the court didn't specifically analyze it. So the case doesn't tell us a whole lot, but it does at least suggest that the last day matters. Notifying an employee that you will enforce their non compete on their last day could end up making that last day the date the court uses to determine if the employee is highly compensated.
If you wait until after that, the court could maybe use a different date. Perhaps the employee would no longer be highly compensated at whatever future date the court ends up using. For more information, check out the links below and click that subscribe button to get more 90 second legal content.
01:41
90 Second Legal- Copyright Level 1 - What is a Copyright?
In this introductory video, we discuss the basis of what copyright law protects and what it does not protect. Copyright law may protect original creative expression, but it does not protect underlying ideas, processes, or inventions.
Bill Groh is a partner with LMB Partners with offices in Denver and Golden, Colorado. For more information, see https://www.lawmeetsbusiness.com/groh-william.
DISCLAIMER: The information provided in this video is for informational purposes only and is not intended to be, nor should it be construed as, legal advice. Watching this video does not create an attorney-client relationship, and the content should not be relied upon as a substitute for professional legal counsel. If you require legal assistance or advice, please consult with a qualified attorney who can address your specific legal needs.
01:45
90 Second Legal - Copyright Level 1 - Why Register?
You don't necessarily have to register your copyright for copyright law to protect it, but registration makes it possible to recover statutory damages and attorney's fees if someone infringes your registered work.
Bill Groh is a partner with LMB Partners with offices in Denver and Golden, Colorado. For more information, see https://www.lawmeetsbusiness.com/groh.
DISCLAIMER: The information provided in this video is for informational purposes only and is not intended to be, nor should it be construed as, legal advice. Watching this video does not create an attorney-client relationship, and the content should not be relied upon as a substitute for professional legal counsel. If you require legal assistance or advice, please consult with a qualified attorney who can address your specific legal needs.
01:39
90 Second Legal - Copyright Level 1 - What is Copyright Infringement?
Not all copying is infringement. Copyright infringement only involves copying of elements of a work protected by copyright.
Bill Groh is a partner with LMB Partners with offices in Denver and Golden, Colorado. For more information, see https://www.lawmeetsbusiness.com/groh
DISCLAIMER: The information provided in this video is for informational purposes only and is not intended to be, nor should it be construed as, legal advice. Watching this video does not create an attorney-client relationship, and the content should not be relied upon as a substitute for professional legal counsel. If you require legal assistance or advice, please consult with a qualified attorney who can address your specific legal needs.
01:34
90 Second Legal - Copyright Level 2 - What is Substantial Similarity?
Copyright infringement analysis depends on the level of similarity between the two works in question. Courts can also use similarity to infer that the defendant had access to the plaintiff's work and could have copied it.
See Copyright Level 1 - What is Copyright Infringement? (https://www.youtube.com/watch?v=rxJWNK4C8j0)
Bill Groh is a partner with LMB Partners with offices in Denver and Golden, Colorado. For more information, see https://www.lawmeetsbusiness.com/groh.
DISCLAIMER: The information provided in this video is for informational purposes only and is not intended to be, nor should it be construed as, legal advice. Watching this video does not create an attorney-client relationship, and the content should not be relied upon as a substitute for professional legal counsel. If you require legal assistance or advice, please consult with a qualified attorney who can address your specific legal needs.
Go deeper on these topics
Trademarks
Protecting brand names and logos, trademark strength, and how courts decide likelihood of confusion.
Noncompetes and trade secrets
Colorado's limits on employee noncompetes, confidentiality clauses, and what counts as a trade secret.
Copyrights
What copyright protects, why registration matters, and how infringement is analyzed.
Have a question about your own situation?
Every business and every dispute is different. These videos are a starting point, and our attorneys can talk through the facts that matter for you.
These videos and this page are for general informational purposes only. They are not legal advice and do not create an attorney-client relationship.
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