How can a trademark attorney protect your brand from infringement?
Trademarks play an important role in brand recognition and product marketing. Trademark law provides exclusive rights to the owner of a registered trademark for as long as it’s actively used. But what do you do when somebody—in the same town or across the country—copies your company’s logo, name, or color scheme and uses them for their own benefit? This counts as trademark infringement, and the steps you take when you discover the unauthorized use depend on the situation.
Let’s take a look at what trademark infringement is and the steps you need to take to protect your brand from it.
What is Trademark Infringement?
Trademark infringement is the unauthorized use of a trademark on competing or related goods or services. A trademark is a symbol, logo, phrase, word, color scheme, or other element that identifies and distinguishes the source of goods and services. Trademarks are registered through the U.S. Patent and Trademark Office (USPTO).
Each trademark is unique and represents a product or service. A federally registered trademark provides exclusive usage rights to the owner of the specified products or services. Companies value trademarks because they help a product or service stand out in a crowded marketplace. Violation of a trademark can reduce a brand’s value, which can have an impact on its reputation and sales.
Infringement may occur when one party (the infringer or junior user) uses an identical or confusingly similar trademark on or in connection with goods and services in a manner that is likely to cause deception, confusion, or a mistake about the source of the goods or services.
When a trademark is infringed, the trademark owner (the senior user) may commence civil legal proceedings against the infringer to prevent further use of the trademark and obtain monetary damages for the wrongful use.
Trademark infringement can take many forms. Examples include:
- Brand infringement: Using a logo, name, or design that is similar to a registered mark. For example, a beverage company might use the font and color of Coca-Cola.
- Trademark counterfeiting: Selling counterfeit products. An online seller, for example, offers fake designer handbags imitating the logo and style of Chanel.
- Domain name cybersquatting: Involves using a domain name that is confusingly similar to a well-known brand to profit from the brand’s reputation.
- Keyword advertising: Involves a business using a competitor’s service mark as a keyword in search engine advertising so their business can appear when a search for the competitor’s products or services is made by a consumer.
- Trade dress infringement: An example could include a café imitating the distinctive layout, design, and overall appearance of a competitor’s café, tricking consumers into believing they’re patronizing the actual brand.
- Product packaging infringement: An example could be a makeup company offering products that are strikingly similar to those of another company.
Likelihood of Confusion: Determining if a Trademark is Infringing
The success of a trademark infringement case normally depends on whether its use by the defendant causes a likelihood of confusion and a weakness in the value of the original mark. A trademark doesn’t have to be identical to the registered one to infringe upon the owner’s rights.
So, in cases where the contentious trademarks or products and services are not identical, infringement will be based on whether their similarity would likely cause confusion and make consumers mistakenly believe they came from the original source.
The likelihood of confusion isn’t the same as actual consumer confusion if there’s no direct competition between the two products or services. As such, courts rely on various factor tests to determine consumer confusion. These tests are found in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (C.A.9) 1979 and come from the Ninth Circuit Court of Appeals.
The court announced eight elements to determine the likelihood of confusion:
- Similarity of the products or services
- Strength of the senior user’s mark
- Similarity of the marks
- Types of goods or services and the level of care likely to be exercised by the consumer
- Marketing channels used
- Evidence of actual confusion
- The junior user’s intent in using the mark
- Likelihood of product line expansion
- Sophistication of the buyers
- Quality of the junior user’s products or services
How to Protect Your Trademark from Infringement
What should you do if you discover that another person or entity is infringing on your trademark? You basically have two options: send a cease-and-desist letter or file a lawsuit.
Send a Cease and Desist Letter
Filing a lawsuit when another person or company is illegally using your mark is rarely the first optimal step. A legal proceeding will take a significant amount of time and money. A more efficient first step is to send a cease-and-desist letter, which is basically a demand letter addressed to the trademark infringer. The letter clearly and succinctly explains the infringement and requests that the infringer stop using your mark within five business days.
If the infringer ignores your letter, you can use it as evidence in a lawsuit to prove that you tried negotiating with the junior user in good faith.
To ensure your cease-and-desist letter is taken seriously by the infringer, consider hiring an attorney.
File a Trademark Infringement Lawsuit
If the infringer does not stop using the trademark as directed by your cease-and-desist letter, you have little choice but to sue. In your lawsuit, you can claim that there’s a likelihood of confusion and that the infringing mark is “diluting” or “tarnishing” yours.
Dilution occurs when the infringer’s use of your mark weakens your brand’s reputation for quality or renders it common through overuse. In this case, your trademark must be famous, recognizable, and distinctive.
In your lawsuit, you might seek an injunction to have the competitor stop infringing or seek financial compensation for any damages you’ve suffered.
Use Your Trademark Actively
Your trademark must be in active use to protect your brand from infringement and copycats. You cannot claim to own a trademark and expect others not to use the same or similar mark if you’re not actively using the trademark itself. Using a trademark means offering your products and services to the public under the trademark. An inactive trademark will not receive enough protection from the courts.
Contact the Florida Trademark Attorney at The Goodwin Firm
If you’re facing trademark infringement issues, contact The Goodwin Firm to consult with an experienced trademark lawyer. Our attorney can evaluate your case, help you understand your rights, and provide guidance on the best course of action. We can provide strong legal advocacy in dispute resolution, negotiations, or litigation, ensuring your interests are protected.