Business Litigation: What You Need To Know About Trademark Infringement

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What is trademark infringement?


The key to finding trademark infringement centers around the likelihood of consumer confusion. When unauthorized, similar, trademarks or service marks are used in commerce, consumers can become confused as to the source of the goods or services. This could present a case for infringement. In order for a business litigator to assist a client in proving trademark infringement the following must be present: the plaintiff must demonstrate that (1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) the defendant’s use of the mark to identify goods or services causes a likelihood of confusion. See A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc. 237 F.3d 198 (3rd Cir. 2000). There are additional elements that courts will use to determine a likelihood of confusion. Circuit Courts throughout the country apply different tests to determine whether there is a likelihood of confusion. However, there are usually overlapping elements in the tests used in each circuit. Some circuits may weigh elements differently than other circuits. The elements that are usually addressed are the following:

  • Similarity of marks
  • Relatedness of Products
  • Relatedness of marketing
  • Channels and likelihood plaintiff will bridge the gap
  • Actual consumer confusion
  • Defendant’s intent
  • Quality of defendant’s product
  • Buyer care and sophistication

Once these elements are established for a client, the foundation of a trademark infringement suit has been laid for a business litigator. The court will then weigh the factors and determine whether the factors favor the plaintiff or the defendant. If the elements favor the plaintiff, a holding of trademark infringement could follow. Although, if the court finds for the defendant, the defendant will seek to have the case dismissed.   

How to report trademark infringement?


If infringement is occurring, a plaintiff can seek a court order (injunction) or damages (monetary relief) in either federal court or state court. However, there are certain requirements that must be met in order to appear in federal court. Also, filing in state court does not guarantee that the case will remain in state court. A defendant can “remove” a case from state court to federal court under certain circumstances. A business attorney can assist in the complete process of reporting trademark infringement. There are additional avenues of reporting that involve E-commerce and social media sites. Trademark holders can notify E-commerce sites and social media sites that their trademark is being infringed. A majority of websites have complaint forms that can be submitted to give notice to these E-commerce and social media sites. An example of some sites that allow this type of reporting are Ebay, Amazon, Facebook, and Instagram.

How to fight trademark infringement?


Business litigators seek to determine whether consumer confusion is present by using client information and consumer surveys. There are certain steps that can be taken to avoid issues with trademark infringement. In a world where businesses are seeking trademarks daily it is important to do research before obtaining a trademark. Researching for other trademarks that are similar before obtaining a trademark will allow for greater peace of mind. Obtaining a trademark after complete research into the mark will allow the goodwill of the trademark to increase unencumbered. With the assistance of a business attorney a client can seek a trademark check through a third party. These trademark checks can be very expensive to perform, however, these checks are usually thorough. These thorough checks into similar trademarks assist trademark holders in fighting potential trademark claims. Performing a simple search would be another option. A simple search could include using search engines to seek for trademarks or service marks in similar channels of commerce. These superficial searches are cost free and still allow some insight into whether a trademark is available. However, business attorneys can assist through each step of the process, extensive and simple checks, in determining whether a trademark is allowable for goods and services. Researching trademarks is essential to curtail future claims from similar mark holders, and it will also allow the trademark holder to stand on firm ground in seeking action against infringers.

How to avoid trademark infringement?


There are certain steps that may be taken to avoid trademark infringement. Some of the steps discussed previously can be used, such as researching a trademark before using the mark in commerce. This small step could prevent business litigation. In certain situations obtaining a federally registered trademark with the USPTO can be beneficial in avoiding an infringement lawsuit. When a federally registered trademark is obtained, the trademark holder is protected from claims of other trademark holders that have not been federally obtained. The registered trademark holder will have claims against anyone that infringes their trademark, whether the infringer knew about the trademark or not. Although, there is a small exception to this rule. If a person who has not obtained a trademark has been using the trademark in commerce, then another who receives a federally registered trademark will not have priority over the first user. There is usually a presumption that a federally registered trademark has priority over others. This is why being vigilant in obtaining a registered trademark, doing proper research before obtaining a trademark, and seeking the advice of a business attorney will avoid most issues with trademark infringement.

Contact us for additional information regarding trademark infringement.