A trademark provides legal protection for words, phrases, logos, designs, or combinations that represent a source of goods and services. Use of similar or identical mark by another is likely to cause consumer confusion as to the source or origin of goods. This is termed as trademark infringement
Nobody likes to have their property stolen or copied, and trademarks, just like patents, copyrights, or trade secrets, are protected by intellectual property rights. Below we discuss in details infringement, how to avoid it, and remedies.
What is Trademark Infringement?
A trademark infringement is the unauthorized use of trademarks or service marks in a fashion that is likely to cause confusion, deception, or mistake regarding the source of the goods/or services.
It isn’t easy to prove who first used the mark if neither party has a registered trademark. Therefore, to avoid losing the chance to trademark your business, you must file a trademark application as soon as possible.
As a federal issue, the Lanham Act covers trademark law. Therefore, a violation of the Lanham Act can be established for any registered or unregistered trademark.
To support a claim of trademark infringement, you must prove several claims to the court:
- Show you’re the owner of a valid and legally protected mark.
- Prove it has priority, meaning being the first to use it.
- The alleged infringer use of the mark in business causes a likelihood of confusion about the source of goods or services.
The courts also look at the following factors to determine if there is a likelihood of confusion:
- The similarity in sound, meaning, and appearance of the marks.
- The proximity of goods.
- The strength and effectiveness of the trademark.
- Marketing and advertising channels similarity.
- How cautious a typical consumer will be before purchasing.
- Evidence that the mark is actually confusing.
- The intent of the alleged in choosing the mark.
The Essence of Trademark Infringement
Trademark infringement occurs when another party uses a mark so similar to yours that it could potentially confuse customers about the source of the goods or services. This confusion might lead consumers to believe that there is some affiliation, sponsorship, or endorsement between you and the infringing party, which does not exist.
It’s essential to understand that infringement hinges on the likelihood of confusion in the marketplace, making consumer perception a critical element in these cases.
Identifying the Signs of Infringement
To spot potential infringement, keep an eye on new entries in your market that mirror your branding too closely. Pay attention to competitor offerings that not only mimic your logo but also use similar taglines, packaging, or advertising styles that could confuse your customers. Monitoring online platforms and marketplaces can also reveal unauthorized uses of your trademark.
Proactive Steps to Mitigate Risks
Being proactive is your best defense against trademark infringement. This includes conducting thorough market research before launching your brand to ensure your trademark doesn’t inadvertently step on existing trademarks within your industry. Regularly using trademark watch services can also alert you to potential infringements as they arise, allowing for swift action.
Legal Documentation and Registration
Strengthen your claim to your trademark by registering it with the appropriate governmental bodies. In the United States, this means filing with the United States Patent and Trademark Office (USPTO).
A registered trademark significantly bolsters your legal standing in infringement cases, offering clearer paths to enforcement and potentially higher damages from infringers.
Educate Your Market
Educating your customers about your brand’s authentic identifiers can also be a subtle yet powerful way to combat infringement. Use social media, your website, and your marketing materials to reinforce the unique aspects of your brand identity. Well-informed customers are more likely to recognize imitations and could alert you to potential infringements.
Navigating Infringement Disputes
If you do find potential infringement, assess the situation carefully. Sometimes, a friendly but firm cease-and-desist letter can resolve the issue without legal drama.
Other times, especially when significant brand damage is at risk, you may need to pursue litigation. Work with a specialized IP attorney to understand the nuances of your specific situation and to craft a strategy that aligns with your business goals.
Long-term Vigilance
Lastly, maintaining vigilance over your trademark rights is an ongoing responsibility. Regularly review your trademark strategy to ensure it evolves alongside your business and continues to offer the protection you need as new markets and technologies emerge.
What are the requirements for a mark to be a trademark?
A mark can only qualify to be a trademark if it is distinctive. This means that it must identify the origin of a particular good. The courts divide distinctive marks into five types of trademark based on their relationship with the underlying products:
fanciful mark
These are words, symbols or devices are specifically invented to serve as trademarks. They are not related to the product or service being sold. This mark is the strongest to register because of its unique nature, which makes it impossible to conceal the origin of the product/service it represents. E.g. Adidas
A suggestive mark
A suggestive mark refers to a mark that suggests or evokes a characteristic of an underlying good. It takes imagination to link the word to the underlying product. The word can be related to the underlying product, but it is not completely unrelated. As with arbitrary and fanciful marks, suggestive marks are distinctive in nature and protected to a high level.
Arbitrary Marks
An arbitrary is not logically related to the underlying product. They include a term, phrase or combination of words that have a well-known meaning but a different meaning. For instance, the Kodak and Apple have no relationship to their underlying products (cameras and computers respectively). The Nike “swoosh”, in the same way, has no intrinsic relationship to athletic shoes. They are inherently distinct.
A descriptive mark
A descriptive mark describes the product’s characteristics or qualities rather than suggesting them. Its color, odor, and function. The terms “Vision Center,” refer to aspects of the underlying product/service (optical services). They provide information about the product. Descriptive marks are not necessarily distinctive, unlike arbitrary and suggestive marks. Therefore, they are only protected if they have “secondary meaning.”
A generic mark on the other hand, is a mark that describes the general product category. The generic term “Computer” refers to computer equipment. Trademark law does not protect generic marks.
A manufacturer selling computers of the “Computer” or “Apple” brands has no entitlement to any trademark protection. That term would not be exclusive to the product. Because generic terms are too useful to identify a product, trademark law does not protect them.
The Core Criteria for a Trademark
To qualify as a trademark, a mark must be distinctive. This distinctiveness is what sets your mark apart from others and signifies your brand as the unique source of your products or services. Here’s a breakdown of what makes a mark distinctive enough to be recognized as a trademark:
Inherent Distinctiveness
This is the gold standard for trademarks. Marks that are inherently distinctive are immediately capable of identifying the source of goods or services. These include fanciful, arbitrary, or suggestive marks.
Fanciful marks, as previously mentioned, are made-up words created solely for their use as trademarks. Arbitrary marks consist of common words applied in contexts where they don’t naturally belong, making their connection to the product non-intuitive. Suggestive marks hint at the nature or quality of the goods without describing them directly.
Acquired Distinctiveness
Sometimes called “secondary meaning,” this applies to marks that are not inherently distinctive but have become recognized through extensive use and marketing.
For example, descriptive marks directly describe a product’s features or qualities and are not protectable unless they’ve acquired distinctiveness through consumer association over time. Proving secondary meaning involves demonstrating substantial, long-term use and recognition of the mark among the consuming public.
Non-Functionality
A fundamental but often overlooked requirement is that a trademark must be non-functional. This means the mark must not be essential to the use or purpose of the product, nor affect the cost or quality of the product.
For example, a specific shape of a chocolate bar can function as a trademark if it doesn’t serve a practical function or result in a cost reduction in manufacturing.
Navigating the Legal Landscape
Understanding these criteria is just the beginning. As a startup founder, your next step involves navigating the legal processes to ensure your mark is registered correctly:
Comprehensive Trademark Search
Before filing for registration, conduct a comprehensive search to ensure that your chosen mark doesn’t infringe on existing trademarks. This search should include registered trademarks and common law marks to avoid potential legal conflicts.
Filing and Registration
Once a mark has been cleared for use, filing a trademark application with the USPTO is crucial. This legal step is where the distinctiveness and non-functionality of your mark will be evaluated. Proper filing not only secures trademark rights but also provides legal leverage in enforcing your trademark against potential infringements.
Ongoing Monitoring and Enforcement
After registration, continuous monitoring of the marketplace is essential to enforce your rights. This proactive approach ensures that your trademark remains distinctive and doesn’t fall into generic use, which can lead to loss of protection.
How Trademark Infringement Works
Trademark infringement penalties varies from case to case, depending on how extensively violation was, of a trademark.
If you are convinced your trademark is being infringed upon, you may file a civil lawsuit against the infringing party. Most trademark owners file lawsuits in federal court. You can also use state common law, but only in cases that are within the same state as the trademark’s registration.
Additionally, you can also challenge a trademark violation by sending a cease-and-desist order to the other party through its attorney. This is a way to try and resolve the situation without going into court.
The USPTO doesn’t enforce trademarks, and these marks are unfortunately not self-enforcing.
To protect your trademark rights, you must ensure that others are not using the mark. Failure to protect the intellectual property, compromises the originality and you may lose your exclusive rights.
Exploring the Mechanics of Trademark Infringement
Trademark infringement isn’t just about unauthorized use; it’s about the confusion created in the market.
If another company uses a logo or brand name similar to yours, and customers start thinking that their products or services are related to or endorsed by you, that’s when infringement kicks in. This confusion can dilute your brand’s strength and divert business away from you, affecting your bottom line.
Legal Threshold for Infringement
The legal benchmark for infringement centers on the likelihood of confusion. This means that infringement occurs when another’s use of a trademark is likely to confuse customers about the source of the products or services offered under the marks.
Courts typically consider several factors to assess this likelihood, including the similarity of the marks, the similarity of the products or services, the sophistication of consumers, and the intent of the infringer.
Strategic Response to Suspected Infringement
Upon suspecting infringement, it’s crucial to conduct a thorough investigation. Document every instance of the infringement, gather evidence of consumer confusion if possible, and assess the infringer’s reach in the market. This data will be invaluable if you decide to take legal action.
Engaging in Constructive Dialogue
Sometimes, the best initial approach is reaching out to the infringer directly. A well-crafted, professional cease-and-desist letter can open a dialogue and often resolve the issue without resorting to costly litigation.
These letters should clearly state your rights, the nature of the infringement, and your expectations (e.g., immediate cessation of the infringing use).
Litigation as a Last Resort
If amicable resolution fails, litigation might be necessary. Filing a lawsuit should be your last resort due to the time, costs, and potential public relations implications involved.
However, in cases where significant damage to your brand identity or market share is at stake, enforcing your rights through court can be the most effective strategy.
Trademark Infringement Case: Legal Remedies
As a trademark owner, you have many legal options available during trademark infringement proceedings. The following are some of the most popular legal remedies for trademark infringement:
Monetary damages
Damages are monetary compensation that is awarded to the victim of a wrongful act by another person. Money is the classic legal remedy for any type of litigation. As plaintiff you can seek monetary damages in trademark infringement cases. You can request actual damages such as, lost sales, the defendant’s profits from the sale of infringed marks, and costs.
Court-ordered Injunction
As a plaintiff, you may request that the court issue an injunction mandating that infringer cease all infringing activity, including the use of the trademark. Injunctions can be imposed on the infringer to stop selling infringing products immediately or after a reasonable sale-off period. It may be temporary or permanent.
Through injunctions you can also restrict the geographic scope (e.g. defendant cannot use trademark within 100 miles from a city), use field (e.g., a defendant cannot use a trademark in the field athletic apparel), and channels of trade (e.g., the defendant should not use trademark when it involves wholesalers).
Court-ordered destruction or forfeiture of infringing products
In the case of trademark infringement, the court is vested with the power to appoint a local commissioner for sealing of infringing material and account. The court may direct such local commissions to destroy infringing material wholly.
The court may also ask the infringer to deliver all the goods or products which are labelled with the trademark in question before a court of law. So as a plaintiff, you may also request that the court issue an order requiring the infringer to forfeit or destroy the infringing items. The order could specify a time frame within which the defendant must produce/forfeit/destroy the infringing goods.
Costs of the Lawsuit / Attorneys’ Fee
All court-related filing fees are included in the costs of the lawsuit, but not necessarily attorneys’ fees. In certain cases, it may be reasonable for you, the plaintiff, to ask and receive payment from the defendant for your attorneys’ fees in addition to any other remedies for monetary relief.
Navigating the Waters of Monetary Compensation
Monetary damages are often the first line of defense that comes to mind. These aren’t just about compensating for lost sales. They can also cover the profits that the infringer has wrongly gained from using your trademark.
This dual approach ensures that the infringer doesn’t benefit from their actions and that you are adequately compensated for your losses. Calculating these amounts might seem daunting, but with the right legal guidance, you can present a clear case to the courts.
The Power of Injunctive Relief
Obtaining an injunction is a powerful way to immediately address infringement. This legal tool stops the infringer from using your trademark further. For a startup, this can mean the difference between a confused market and a clear path to establishing your brand.
Injunctions can be temporary or permanent, depending on the severity and duration of the infringement. They serve as a strong deterrent against future infringement not only by the offending party but also by anyone else who might consider similar actions.
Destruction or Forfeiture: Eliminating Infringing Products
Sometimes, stopping the use of your trademark isn’t enough. If the market is flooded with products that infringe on your trademark, you may seek a court order for the destruction or forfeiture of these products.
This remedy ensures that no trace of the infringing items remains in the market, helping to restore the unique association of your trademark with your products alone.
Recovering Costs: Beyond the Basics
Trademark infringement cases can be expensive. Fortunately, you can often recover the costs associated with defending your trademark.
This doesn’t just include the filing fees; it may also cover your attorney’s fees, which can be substantial. By shifting the financial burden of the lawsuit to the infringer, it serves as another deterrent against trademark infringement.
Implementing Proactive Legal Strategies
Armed with knowledge about these remedies, you can take a proactive stance in protecting your trademark. Here are a few strategic approaches:
Early Legal Consultation: Engaging with a trademark attorney early on can help you understand the nuances of trademark law and prepare you for any potential infringements.
Customized Legal Documentation: Tailor your legal documents, such as cease-and-desist letters, to each infringement case. Personalized documents are often more effective in communicating the seriousness of your claims.
Regular Legal Audits: Conduct regular audits of your trademark usage and the marketplace. This will help you spot potential infringements early and respond swiftly.
Educational Outreach: Educate your customers, partners, and the market about the significance of your trademark. A well-informed public is an excellent defense against infringement.
How to Avoid Trademark Infringement Claims
Here are steps as a business owner to follow to avoid a trademark infringement lawsuit:
Do your research
Doing a trademark search before a trademark use is the best way to avoid someone claiming infringement. To ensure that no one else has a similar trademark, check official records. You can search these places:
- Trademark Electronic Search System of the USPTO (TESS).
- Register your state business name in the state where you do business.
- The World International Property Organization’s Global Brand Database if you do business internationally.
Document your findings
Keep a record of all your thoughts and motives in choosing your mark. Be clear about why third-party marks are distinctive in the mind of consumers. Timestamps and supporting documentation are helpful in a dispute.
It can be helpful if another company sues you if you have documents that show when your trademark started to be on use. As it may be very helpful if you have to sue another company for violating your trademark. You can salvage money and time by investing time and money early to find potential trademark conflicts.
Register your trademark
After you have created a strong brand, and cross-referenced logos and branding to existing brands, it is time to protect your branding. Properly registering your trademark is necessary in order to enforce it.
Registering your trademark will allow you to identify counterfeits using your brand’s trademarks. You can file USPTO trademark registrations in the United States.
Enlist legal help
Although you might think you are in control if there isn’t an exact match, this is not always the case. Consider hiring a trademark attorney before you proceed. They can access other databases such as state trademark records or common law marks. Work with experienced trademark lawyers to help understand potential risks in adopting the potential mark and options to minimize potential risks.
You might also consider liability insurance
If sued for trademark infringement, liability insurance can help pay for your legal expenses, including:
- Attorney fees
- Expert witness testimony
- Court fees
- Settlements or judgments are available if the case is lost
Comprehensive Trademark Research: Your First Line of Defense
Before you finalize your brand name and logo, dive deep with a thorough trademark search. This isn’t just a cursory look at registered trademarks; it involves a detailed analysis of trade names, domain names, and even social media.
The goal is to ensure that your chosen trademark isn’t just available, but also safe from potential infringement accusations. Utilizing tools like the USPTO’s TESS database or international databases if you’re planning to expand globally, can provide you with the comprehensive insight needed to make an informed decision.
Engaging Specialist IP Counsel: Tailored Advice for Your Brand
Legal advice is not one-size-fits-all, especially in the nuanced world of trademarks. Engage with intellectual property attorneys who specialize in trademark law and have experience within your industry.
They can provide bespoke advice that considers your specific market conditions, competitor activity, and potential risks. This targeted legal counsel can help refine your trademark strategy, from the selection process to the application and beyond.
Documentation and Proof of Concept: Building Your Legal Foundation
As you develop your brand, keep meticulous records of your creative process, marketing plans, and brand development strategy.
Documenting the evolution of your brand not only helps in defining your trademark but also serves as critical evidence in enforcing your rights. This proof of concept is invaluable, showing the originality and distinctiveness of your trademark.
Proactive Monitoring: Keeping a Watchful Eye
Implement regular monitoring of marketplaces, social media, and other commercial spaces where your trademark could potentially be infringed. Early detection of possible infringements allows you to act swiftly to mitigate any damage. Consider subscribing to a trademark watch service that can alert you to new applications or uses that might conflict with your brand.
Education and Public Awareness: Empowering Your Customers
Educate your customers about what distinguishes your brand. Utilize your website, social media, and marketing materials to communicate the unique elements of your trademark.
An informed customer base can act as an extension of your monitoring strategy, often identifying and reporting potential infringements before they become significant issues.
Transparent and Consistent Brand Use: Avoiding Confusion
Ensure that your use of the trademark is consistent and aligns with how you’ve registered it. Consistency in your trademark application, from color schemes to font styles across all platforms, reinforces brand recognition and helps in avoiding legal challenges related to misleading or inconsistent usage.
Legal Frameworks and Contracts: Solidifying Your Rights
When entering into business arrangements, make sure that your contracts clearly delineate rights regarding trademark use, especially in co-branding scenarios or partnerships. Clear contractual terms prevent misunderstandings and provide a strong basis for legal action if needed.
Responding to Infringement: Strategy Over Impulse
Develop a clear strategy for dealing with potential infringements. While a cease-and-desist letter is a common first step, tailor your approach based on the specific situation. Sometimes, a more diplomatic initial contact can preserve business relationships while still protecting your rights.
Defenses Available In Trademark Infringement Claims
There are many defenses against a claim for trademark infringement. First, defendants may contest the validity and legality of the trademark.
There are several affirmative defenses that defendants can use to defend themselves against a lawsuit. The defenses are generally based on the exclusion of the defendant’s conduct due to the plaintiff’s misconduct or the fact that the defendant allowed the use of the trademark to ensure there is no infringement. Below are defenses one can use:
Parody
The law allows trademark use in the contexts of artistic or editorial parody. The use of a trademark in the context of an artistic or editorial parody is allowable by law. However, it may not be directly tied to commercial use. It will also not cause confusion. Parody is the act of making fun of a product within the context of entertainment programs.
Fair Use
Two instances are allowed under the Fair Use Doctrine for a party to use another party’s trademark. Descriptive fair usage allows the use of the trademark as a descriptive term and not for its association to a brand, goods, or services. Nominative fair usage applies when the mark refers to the actual product identified with a mark. Fair use can also apply if the trademark is used within the context of criticism or commentary. Consumer confusion in these cases is unlikely, so it cannot be established that infringement happened
Other Defenses
As a plaintiff, you can sue a defendant if they have shown that they engaged in a certain type’s wrongful conduct. The following are some examples:
- When you as the plaintiff knew or should have known about the defendant’s infringement but unreasonably delayed bringing a timely action.
- The defendant was implicitly or explicitly allowed to use the plaintiff’s mark.
- Unclean Hands. This applies to plaintiffs who engage in illegal or egregious behavior, such as fraudulent statements about their trademark.
Unveiling the Misconceptions Around Trademark Usage
A common defense revolves around the misconception about the use of a trademark. If you can demonstrate that your use of the mark was purely descriptive and not an attempt to confuse consumers, you may have a viable defense.
This is particularly relevant for companies that use terms which, while trademarked, have become generic in colloquial or industry-specific usage.
The Concept of ‘Prior Use’ Defense
One of the strongest defenses in a trademark infringement case is the ‘prior use’ argument. If you used the trademark before the plaintiff registered it, you might continue to use the mark in the original geographic area of use. Documenting and providing proof of this early usage can effectively protect your right to the trademark.
Challenging the Trademark’s Distinctiveness
Another angle to approach your defense is to challenge the distinctiveness of the plaintiff’s mark. If the mark is deemed not distinctive enough, it may be categorized as generic.
This argument hinges on demonstrating that the term is widely used by other businesses for similar goods or services and has not acquired secondary meaning.
Exploring the Laches Defense
Laches is a defense that argues that the plaintiff waited too long to assert their infringement claim, during which time you might have built substantial equity around the trademark. If applying the laches defense, you’ll need to show that acting sooner could have prevented significant investment on your part.
Understanding the Fair Use Doctrine in Depth
Fair use is a critical defense, especially when you are using the mark not to identify the source of the goods or services, but rather to describe them, or to compare them to others. This is common in comparative advertising.
The fair use defense is robust if you use the trademark to refer to the actual goods and services it denotes, without suggesting sponsorship or endorsement by the trademark owner.
Navigating Consent and Coexistence Agreements
Sometimes, the original trademark owner may have consented to your use of the mark, which can be a potent defense. It’s essential to formalize such agreements through consent decrees or coexistence agreements, which clarify the rights and limitations of each party. These agreements are especially useful in international markets or in industries with rapid innovation and overlapping trademarks.
Crafting Your Legal Strategy
As you prepare your defense against a trademark infringement claim, consider the following strategic actions:
Engage Early with Legal Experts: Consulting with an attorney who specializes in intellectual property right at the beginning can help you understand the complexities of trademark law and build a solid defense strategy.
Document Everything: From the inception of your trademark use, keep thorough records. Documentation can be your best defense in proving when and how you’ve used the trademark.
Negotiate When Possible: Before things escalate to litigation, try to negotiate. Often, a mutually beneficial agreement can be reached without the need for costly and time-consuming court cases.
Educate Your Team: Make sure your marketing and legal teams are well-versed in the nuances of trademark law. A well-informed team can prevent potential infringements before they occur.
Now Over to you
To defend against a trademark infringement case, you must first evaluate the facts and then understand the laws and options. Then, you need to be able to effectively execute strategies in a courtroom. Patent PC has extensive experience in trademark litigation. We have represented plaintiffs seeking damages and injunctive relief, as well as defendants facing trademark infringement claims. We use our experience to assist clients in understanding the potential liability and the defense strategies that could defend against such claims. For more information contact us.
