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.

Table of content

What is Trademark Infringement?

What are the requirements for a mark to be a trademark?

How Trademark Infringement Works

Trademark Infringement Case: Legal Remedies

How to Avoid Trademark Infringement Claims

Defenses Available In Trademark Infringement Claims

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:

  1. Show you’re the owner of a valid and legally protected mark.
  2.  Prove it has priority, meaning being the first to use it.
  3. 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.

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:

Type #1: 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

Type #2: 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.

Type #3: 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.

Type #4: 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.”

Type #5: A generic mark

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.

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.

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:

Remedy #1: 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.

Remedy #2: 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).

Remedy #3: 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.

Remedy #4: 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.

How to Avoid Trademark Infringement Claims

Here are steps as a business owner to follow to avoid a trademark infringement lawsuit:

Step #1: 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.

Step #2: 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.

Step #3: 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.

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.

Step #5: 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

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:

Defense #1: 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.

Defense #2: 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

 #3: 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.

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.