united-states trademark civil-law public-domain
Is an exact match necessary to prove trademark infringement?
<p>For the sake of example, let's use Robert E. Howard's character &quot;Conan, the Barbarian&quot;. The author died in June 11, 1936, Cross Plains, Texas, United States.</p>
<p>As seen above, it's been almost 97 years of his passing at the time this question was posted. His works, including the mentioned character, are well into public domain.</p>
<p>Though that might be true, the expression &quot;Conan, the Barbarian&quot; is trademarked. Assume I want to write a novel about the rebirth of the character in the modern times. The title would be &quot;Conan, the reborn Barbarian&quot;.</p>
<p>Assume the copyright holder sues me for infringement of the eponymous copyright. Do they have cause to file this lawsuit?</p>
<p>Does the use in the hypothetical above constitute a &quot;sufficiently related&quot; use as stated in <a href="https://www.uspto.gov/page/about-trademark-infringement" rel="nofollow noreferrer">https://www.uspto.gov/page/about-trademark-infringement</a></p>
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<p>The key factors considered in most cases are the degree of similarity between the marks at issue and whether the parties' goods and/or services are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source. Other factors that courts typically consider include how and where the parties' goods or services are advertised, marketed, and sold; the purchasing conditions; the range of prospective purchasers of the goods or services; whether there is any evidence of actual confusion caused by the allegedly infringing mark; the defendant's intent in adopting its mark; and the strength of the plaintiff's mark.</p>
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<p>Issues of <a href="/questions/tagged/copyright" class="post-tag" title="show questions tagged &#39;copyright&#39;" aria-label="show questions tagged &#39;copyright&#39;" rel="tag" aria-labelledby="tag-copyright-tooltip-container">copyright</a> are to be ignored. There's no copyrighted material or fair use. The character used in the hypothetical is in <a href="/questions/tagged/public-domain" class="post-tag" title="show questions tagged &#39;public-domain&#39;" aria-label="show questions tagged &#39;public-domain&#39;" rel="tag" aria-labelledby="tag-public-domain-tooltip-container">public-domain</a>.</p>

<p>An exact match to a trademark is not necessary for trademark infringement to occur, as demonstrated in Toys &quot;R&quot; Us v. Akkaoui, 40 U.S.P.Q.2d (BNA) 1836 (N.D. Cal. 1996). Toys R Us successfully sued the adult website Adults R Us despite the lack of an exact match to any trademark, as the use of the name &quot;Adults R Us&quot; diluted the trademark of Toys R Us.</p>
<p>However, your specific hypothetical would probably need an actual lawyer to properly guess whether it would likely be considered infringing, as it's hard to know for certain.</p>
