Trademark infringement is the unauthorized use of a trademark or service mark on competing goods or services in a manner that is likely to cause confusion about the source of the product or service. Most people are surprised to learn that a trademark does not have to be registered with the U.S. Patent and Trademark Office (USPTO) in order for infringement to occur due to common law rights.
For an infringement claim to be successful, the claimant must demonstrate that the use of the trademark in question is likely to cause confusion with consumers, thereby weakening the value of the trademark. If this can be successfully proven, the trademark owner might be entitled to monetary compensation and recovery of attorney’s fees in exceptional cases.
While it is not a legal requirement to register your trademark with the USPTO, doing so may give you exclusive rights to use the trademark with specified goods and services. Additionally, registering provides public notification of ownership. You are less likely to be targeted by infringing parties if they know you take the ownership and protection of your trademark seriously.
Proving Trademark Infringement
Trademark law protects the trademark owner’s right to use the trademark exclusively in conjunction with their goods or services. Although states do offer some protections, trademark law is generally a federal issue. The Lanham Act is a federal statute that governs trademark law and unfair competition. In order to establish that a violation of the Lanham Act took place, the plaintiff must prove that they own the trademark, and prove a likelihood of confusion.
When determining the validity of a trademark infringement claim, the main question is whether or not the two trademarks at issue will confuse or mislead consumers about the source of the products. Typically, the courts answer this question by considering seven questions:
- How similar are the trademarks? This is a tricky question, as the judgement is often subjective. Specifically, the courts will consider if there is visual and phonetic similarity, while also taking into account various translations and definitions. But getting around this hurdle isn’t as simple as moving letters around or adding other words. For example, the Trademark Trial and Appeal Board (TTAB) found the trademarks Zirco and Cozirc too similar, determining that the average consumer was likely to confuse the two.
- How similar are the goods or services being offered? Consumers are more likely to confuse the trademarks at issue if the products or services being offered by the two trademarks are closely related. If the industries are different enough, identical trademarks could be allowed by the trademark office. For instance, customers are unlikely to think that an apparel company is also manufacturing video game consoles, even if the brand names are the same.
- Was there an intent to deceive? If it is determined that a defendant has willfully mislead customers about the source of their products or services, the courts are much more likely to rule that trademark infringement has occurred.
- How strong is the plaintiff’s trademark? Trademarks that are fanciful, arbitrary, or suggestive are more likely to be protected than weaker, generic or descriptive trademarks.
- How much care do consumers put in making a purchase? The cost of the products and services are a factor in determining trademark infringement. The courts are more likely to rule in favor of non-infringement if the products are cheap and the consumers quickly make purchase decisions.
- Are the goods or services likely to overlap? Even if the services being offered don’t currently overlap, the courts will determine if an overlap could occur in the future through the natural expansion of the companies.
- Do the two trademarks share a marketplace? The interface of the target market plays a role in determining infringement. If the consumers are the same for the two trademarks, the court will likely favor infringement even when the products and services being offered are different.
Examples of Trademark Infringement
Below are some famous examples of trademark infringement cases:
- Louis Vuitton v, Louis Vuiton Dak: A South Korean fried chicken restaurant lost a trademark battle over the right to use the restaurant name Louis Vuiton Dak. The restaurant also used a logo that closely resembled the fashion company’s packaging.
- Taylor Swift v. Lucky 13: American folk and pop star Taylor Swift was sued by Blue Sphere, a clothing company that owns the trademark Lucky 13 after Swift used those words on fashion merchandise. The case was settled out of court with the results not released to the public. Since then, Swift has aggressively trademarked lyrics and phrases she uses in her lyrics to avoid similar issues.
Avoiding Trademark Infringement
To avoid inadvertently infringing on a registered trademark, you should conduct a trademark search on the USPTO’s website to make sure your desired trademark isn’t already taken by another owner. It’s best to do this as early on in the process as possible, so you can spot any red flags before creating websites, signs or producing merchandise. Remember that you can still be guilty of trademark infringement even if the spelling of your trademark doesn’t match exactly. If you’re not careful, you could miss a heavily stylized version of your desired trademark that already exists. It’s also possible to be found liable for trademark infringement despite the trademarks being different, if the companies have similar commercial impressions. For example, two trademarks for a skating rink, Jellybeans and Lollipops, were found likely to cause confusion to consumers.
A trademark attorney can conduct a thorough search on your behalf, and they will be able to identify potential issues during this process. When unsure if the use of a trademark constitutes trademark infringement, it’s best to play it safe and focus on creating a new, strong trademark, rather than risk a potential costly infringement lawsuit. An experienced trademark attorney can also consider the unique circumstances of your case, and help you to determine whether using your desired trademark constitutes an infringement.
Protecting Your Trademark
Registering your trademark with the USPTO is your best safeguard against infringement and is a huge advantage in potential lawsuits. Once your trademark is successfully registered, it is your responsibility to monitor your trademark and act swiftly against any infringement.
One way to stop infringement is to create a Google alert for your trademark which may notify you of infringements online. For important trademarks we recommend that our clients have us set up a trademark watch which notifies us any time a similar trademark is filed.
If you notice an unauthorized use of your trademark, your first step will likely be to send a cease and desist letter to the infringing party.
Cease and Desist Letter
A trademark cease and desist letter places an infringing party on notice of the trademark rights and demands that all unauthorized uses of the trademark end. Additionally, you could demand monetary compensation if you believe the infringing party has profited off the use of your trademark.
It should be noted that a cease and desist letter is less likely to be ignored if it is sent by a trademark lawyer than if it is sent by the business owner or a lawyer who doesn’t litigate trademark cases. If the infringer fails to respond, or continues to use the trademark, you will have the option to move forward with filing a lawsuit. Typically, a cease and desist letter from a law firm that litigates trademark cases will convince an infringer to cease the infringement.
Receiving a Cease and Desist Letter
If you are the recipient of a receive a cease and desist letter, we suggest that you consult a trademark attorney. Many business owners make critical errors by unknowingly admitting liability in their actions or responses. A trademark attorney will help you craft a response and determine your rights in the situation.
It’s possible to receive a cease and desist letter without having done anything wrong. Trademark bullies will sometimes send cease and desist letters in an attempt to damage their competition, or a business owner might be uninformed about the breadth of their trademark rights. Depending on the situation, you might be able to prove that the sender of the letter is infringing on your trademark rights if you are able to prove that you were using the trademark first.
Defenses Against a Trademark Infringement Claim
Typically, the defendant uses one of the following defenses when being sued for trademark infringement.
- The trademarks at issue are not confusingly similar.
- The alleged infringer has prior use.
- The trademark was used by the defendant merely to describe their product or service, and not to mislead consumers about the source.
- The trademark registration was fraudulent.
- The Plaintiff waited too long to assert its rights.
- The plaintiff had abandoned the trademark. A trademark is considered abandoned when its use is discontinued without an intent to resume usage. Typically, if a trademark is not used for three consecutive years the trademark is considered to be presumptively abandoned.
- The defendant was given permission from the trademark owner to use the trademark.
If a trademark infringement lawsuit is successful, the plaintiff may recover any profits the defendant received through the fraudulent use of their trademark. In exceptional cases, the courts will also award the attorney’s fees to the plaintiff. The courts are much more likely to award heavy damages if it can be proven that the defendant intentionally used the trademark in bad faith. However, the main goal of an infringement lawsuit is usually to obtain an injunction against the defendant barring any further infringement or dilution of the trademark.
The Importance of Protecting Your Trademark
The financial ramifications of trademark infringement can devastate a business, and a company’s reputation can also be irreversibly damaged through the unauthorized use of its trademark. It’s therefore crucial to protect your brand and send a strong message that any infringement of your trademark will result in heavy legal consequences.