Trademark infringement or unauthorized use can be a costly mistake under particular circumstances. Trademark owners may bring legal action against anyone for using, copying, or impairing their trademark or service mark in federal court. This article will discuss the basics of the Lanham act and explain how to avoid such trademark infringement cases.
Introduction: What is Trademark Infringement?
According to US trademark law, there are three main ways to achieve trademark protection:
Common Law Trademarks: Harder to enforce due to geographical limitations.
State Trademarks: Geographical limitations, but provide trademark protection for the related goods and services in the registered state.
Federal Trademark Registration (USPTO): Registration at the United States Patent and Trademark Office is the gold standard for any brand or trademark owner conducting business there. And most brand and intellectual property owners do.
Trademark infringement (for registered trademarks) occurs when someone uses a substantially similar or the same branding as the plaintiff’s mark without the proper permission or licensing. The plaintiff must believe that the use will cause consumers to confuse the origin of its goods or services. Trademark protection through a federal registration at the USPTO allows trademark owners to pursue trademark infringement proceedings.
Defendant’s intent only comes into play if the infringement was willful. For example, in a case from 2020, New Balance argued that New Bunren, a Chinese shoe company, was deliberate in its violation. New Balance showed that the New Bunren continued its infringing activity after being notified. New Bunren used “virtually identical marks on virtually identical goods to deliberately deceive customers.” The District Court found in favor of New Balance ordering New Bunren to pay statutory damages.
Understanding a Trademark Infringement Claim
To prove infringement, a federally registered trademark owner must show that (1) the plaintiff’s mark is legally protectable and valid; (2) the plaintiff owns the mark; and (3) the defendant’s (alleged infringer) use of the allegedly infringing mark with competing or related goods or services causes a likelihood of confusion. Evidence of actual confusion is not required for consumer confusion, although the confusion cannot be hypothetical.
A brand owner has a legal and valid trademark through established rights that arise from either common law rights, state registration, or federal trademark registration. The plaintiff can prove ownership with evidence of the mark’s use in the marketplace for selling related goods or services. To establish a likelihood of confusion exists, there must be confusion on the consumer’s side regarding the source of a good or service. The infringing mark must be a substantially similar mark to the plaintiffs’ for the related goods or services.
The primary assessment will be made by reviewing the likelihood of confusion standard, also known as the similarity test. The court considers eight (8) factors when reviewing if the marks are similar enough to confuse the source or sponsorship of the goods or services. The factors range find determining the strength of the plaintiff’s mark to actual confusion between the two marks.
Although, the majority of the analysis is done through two factors: similarity between the respective marks and relatedness of goods or services. When reviewing a likelihood of confusion claim, the Seventh (7th) Circuit United States Court of Appeals examines seven factors to determine consumer confusion. They are (1) the strength of the plaintiff’s mark, (2) the similarity between the plaintiff’s and defendant’s mark, (3) the similarity or relatedness of the goods or services, (4) the sophistication of buyers, (5) area and manner of concurrent use, (6) actual confusion, and (7) defendant’s intent.
For unregistered trademarks, the “false designation of origin” claim under section 43 (a) of the Lanham Act protects against unfair competition. The unfair competition in this scenario is the unauthorized use of a mark that infringes upon the plaintiff’s mark. Registered trademark owners often utilized both claims, trademark infringement, and false designation of origin in a federal court.
What are the Common Types of Trademark Infringement?
Trademark infringement can come in many forms.
It can be in the form of counterfeit goods, which mislead the public and confuse the product’s source. The New Balance v. New Bunren case is one of many trademark infringement examples that involve willful infringement of a logo by selling counterfeit products. Brands should work with a trademark attorney that can apply an anti-counterfeiting strategy to minimize trademark infringement.
A common trademark infringement claim is trademark dilution. There are two types of trademark dilution, dilution by blurring and dilution by tarnishment. The claim usually involves a plaintiff’s famous mark, where the defendant’s use of a similar/same mark in commerce after the famous mark reaches to meet the threshold of trademark dilution.
Trade dress infringement occurs when the plaintiff’s mark is registered to protect a product or service’s overall image and appearance. They include color marks, sound marks, motion marks, and other nontraditional trademarks. For example, Tiffany & Co. protects the Tiffany Blue as a part of its unique look. Additionally, it is a quintessential part of the brand’s appearance, as seen in packaging, ads, social media presence, licensing deals with Nike, and so much more.
Sometimes, a brand owner has developed a name or identity they want to represent on the internet. Unfortunately, it is widespread for a trademark owner’s mark to not be available as a domain name due to cybersquatting. In this scenario, working with a trademark attorney to determine your options is best. The options include a cease and desist letter, a federal lawsuit involving an ACPA action, or a UDRP & URS administrative proceeding.
How Can a Trademark Owner Protect Itself from Infringement?
Trademark protection begins with a registered trademark at the United States Patent and Trademark Office. Without registration, a brand owner is limited to bringing a lawsuit on the false designation of origin charges. Common law trademark rights are limited, and to provide comprehensive protection for your brand, a brand owner must develop a diverse trademark portfolio.
Trademark protection is nothing without enforcement. Enforcement for a brand should include monitoring and policing services, but it should also have decisive action when two marks are similar. Cease and desist letters, TTAB proceedings (Opposition/Cancellation), or federal trademark infringement lawsuits should be considered when enforcing a trademark.
When a trademark owner fails to enforce their trademark rights, it weakens their ability to implement it in the future—a very use-it-or-lose-it approach. Although TTAB proceedings can bring resolution, they will not yield any monetary relief for damages or legal fees sustained by the plaintiff. Court orders for an injunction or damages, including attorneys fees, are available and actionable in federal court.
Bringing a lawsuit should be the last resort, and not every infringement requires an expensive federal court filing. A thorough review of ownership issues, market risks, and realistic resolutions should be at the heart of a trademark owner’s enforcement policy. This is where a trademark attorney can be of assistance.
Conclusion – Taking Action to Protect Your Business from Trademark Infringement
You must understand the risks of not acting against infringers as a brand owner. Hiring a trademark lawyer for brand development, enforcement, and prosecution matters is essential. If you need assistance with a trademark infringement claim or other trademark issues, please book a consultation with the firm.