Trademark infringement is a substantial threat, even for companies and institutions that properly register their marks. It is essential that trademark holders — or their lawyers —frequently monitor for misuse of trademarks, and directly address infringement when it happens. Disputes regarding prior use, infringement, and different markets can compromise marketing strategies and interfere with how a company positions itself in the marketplace. To minimize confusion and maintain trademark rights, trademarks are registered and enforced both internationally and domestically. By comparing the trademark’s design, registration, and goods covered by the mark, it is possible to determine if an unregistered trademark infringes the mark in question.
Type of Trademark Litigation
Trademark infringement can occur in many ways. Trademark infringement can be blatant and involve a competitor using your mark,or a mark that is so similar that consumers are misled as to the producer of the product in question. Other cases may involve trademark dilution. This occurs when a competitor adapts a trademark that blurs the distinction between its goods and services and yours, or tarnishes your mark by using it on low quality goods.Our office counsels and represents clients in regard to the following issues as they pertain to grounds for trademark litigation:
- Trademark infringement/unfair competition
- Trade dress infringement
- Trademark Trial and Appeal Board
- False advertising
- Online infringement
- Cybersquatting and domain name issues
- Merchandising and licensing disputes
- Concurrent registration
- Disputes over prior use
- Senior registrant rights against pre-registration user
- Disputes regarding second users and constructive notice
- Secondary meaning and descriptiveness
- Similarity of goods or services
- Similarity of marks
Trademark infringement occurs when someone uses your trademark without your permission. Trademark infringement can be proven when it can be shown that the design, slogan or phrase that you are challenging raises a “likelihood” that consumers will be confused by the mark and associate it with your trademark.Courts look at whether there is a “likelihood of confusion” between your trademark and the other mark. Specifically, courts see whether the consumer would likely be confused as to who is the source of the goods or services. Courts consider several factors in deciding whether there is a likelihood of confusion, such as (i) the strength of your mark, (ii) the similarity of the marks, (iii) whether there has been actual confusion, and (iv)the intent of the defendant in using your trademark. The less similar the goods or services, the less likely the court is to find infringement. Evidence of actual consumer confusion and intent to confuse is taken into account, among other factors.
The remedies available upon winning a trademark infringement lawsuit include: :
- Prevention of the defendant from using the trademark
- Recovery of the defendant’s profits that resulted from the infringement
- Recovery of losses suffered as a result of the infringement
- Triple the damages, if you can prove the defendant acted “in bad faith,” meaning it was not accidental
- Potential recovery of attorney’s fees
If a trademark becomes famous, like Xerox or Apple, the owner can also sue for trademark “dilution.” Xerox is a common example of a famous mark because the name over time has become synonymous with the machines that the company sells. Judges determine whether a mark is famous by examining the mark’s notoriety, advertising, publicity, use, age, registration and the geographic market in which the holder operates.Dilution happens when a trademark’s distinctive quality is blurred or tarnished by another mark. There does not have to be any likelihood of confusion. The trademark is tarnished when a similar mark is placed on an inferior product of lesser quality, even if it is a totally different product.
Be advised that defenses are available for a claim of dilution. The two main defenses are fair use and parody. The fair use defense applies to descriptive trademarks and argues that the alleged infringer used the trademark in good faith for its primary meaning, not the secondary meaning that is protected. A similar defense is called nominative use, which happens when the alleged infringer usesthe trademark out of necessity, to identify the other product. For instance, a running magazine cannot do a survey about who wears which Nike products without using the trademarked name Nike. Another defense is when the trademark is used in a parody or other critical analysis. The First Amendment right to free speech outweighs the rights of the trademark owner in these scenarios.
The remedy for dilution is much more limited than that of trademark infringement. Damages are only awarded if the defendant purposefully tried to profit by using a trademark similar to the famous one.
Trade Dress Infringement
Trade dress infringement occurs when a competitor borrows the look and feel of your goods and services, and may even use a similar name or offer similar products. The user can be as blatant as creating a near-identical copy of your business. At Barshay Sanders, we take great care to get you the full amount of compensation you deserve and to halt the infringement. If the trademark infringement was intentional, and often it is, we will seek the enhanced damages that you are entitled to.
Before Using a Trademark
Before using a trademark, you should conduct research to make sure no one else is your mark. This is called “clearance.” You can hire a company to do the trademark search, or you can do it yourself by looking on the internet and searching the USPTO database. You should also search for variations on the name that could be considered infringing. If you find that the trademark is (i) already in use by a third party, or (ii) using a confusingly similar mark, in connection with the same or similar goods or services, you should find another trademark. Proceeding to use a mark when these instances are present could be financially detrimental and harmful to your business.
How we Approach Trademark Infringement Disputes
There are a variety of ways to “win” a trademark dispute. Each case is unique and requires an experienced trademark dispute lawyer to guide and advise. It is important to ask whether the possible solution would result in the optimal economic outcome for the client. The preliminary question to ask is whether a reasonable likelihood of confusion exists between the two marks. While the specific reference case varies jurisdiction to jurisdiction in Federal Court, the tests are very similar, looking at a number of factors to determine confusion on a case-by-case basis, such as :
- The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression;
- The similarity or dissimilarity and nature of the goods described in an application or registration or in connection with which a prior mark is in use;
- The similarity or dissimilarity of established, likely-to-continue trade channels;
- The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing;
- The fame of the prior mark;
- The number and nature of similar marks in use on similar goods;
- The nature and extent of any actual confusion;
- The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion;
- The variety of goods on which a mark is or is not used;
- The market interface between the applicant and the owner of a prior mark;
- The extent to which applicant has a right to exclude others from use of its mark on its goods;
- The extent of potential confusion; and
- Any other established fact probative of the effect of use.
After this legal analysis an economic calculus is required. In other words, it should be determined whether pursuing or defending a trademark infringement case, or Trademark Trial and Appeals Board case (TTAB) is financially viable. TTAB cases are significantly less expensive and can be a reasonable alternative to pursing district court litigation. The TTAB remedies, however, are very limited and do not provide monetary damages or attorneys fee.
If the parties cannot settle, there is a possible choice of pursuing a remedy through district court or even state court trademark litigation, often coupled with unfair competition, false and misleading advertising, and other claims. The firm has successfully handled false advertising claims under the Lanham Act, and state law false advertising statutes and unfair business practices. Our trademark litigation attorneys:
- Defend and prosecute trademark litigation claims in state and federal courts throughout the United States and overseas;
- Have a tremendous record of highly successful cases in seeking temporary restraining orders, preliminary injunctive relief and permanent injunctive relief orders;
- Both defend and prosecute cancellations, oppositions, and concurrent use proceedings the United State before the U.S. Trademark Trial and Appeal Board—and before the World Intellectual Property Organization (WIPO) and internationally through local counsel;
- Put business decision first, negotiating and settling trademark disputes in a common-sense manner before they can turn into litigation; and
- Give guidance and counsel on client advertising, branding, and other trademark use to help greatly reduce the risk of future liability for trademark infringement claims.
Default judgments where there was no response filed and the filing party automatically won, are entered in approximately 68% of all Lanham Act (trademark) cases.
Overcoming Challenges in Trademark Infringement Cases
To succeed in a trademark infringement case, the strength of your mark must be demonstrated in court; specifically, the value of your mark to your business. In many cases, we conduct a consumer survey to show how consumers associate your trademark with the goods and services provided. Our experience means we are fully equipped to build a strong and compelling case.
Emergency Relief in Trademark
A common strategy is to file an infringement lawsuit and ask the court to grant emergency relief until the case can be fully litigated and decided in a trial. This type of relief—termed a preliminary or temporary injunction—typically orders the alleged infringer to stop using the mark in question pending the outcome of the lawsuit.Because, as a practical matter, getting slapped with an order of this type puts the alleged infringer in an untenable position from the outset, the party bringing the suit typicallyreaches a settlement on favorable terms. Obtaining a preliminary injunction requires convincing the court of two basic facts:
First factor: Irreparable Harm
If the emergency relief is not granted, your business will suffer irreparable injury.Your case is strong enough on its face to make it probable that you’ll win if and when a trial eventually takes place.The first fact is easy to show. The existence and use of an infringing mark daily robs the mark’s owner of its customer base and the business goodwill that the mark represents. Because there is no real way to measure the loss of goodwill in monetary terms, this type of injury is usually considered irreparable as a matter of course.
Second Factor: Probability of Success on the Merits
Here, the judge has to be convinced that the plaintiff’s infringement claim is strong enough to warrant depriving the infringer of the right to use its mark without first holding a trial.
Some judges are more willing to do this than others, and it is impossible to predict whether an attempt to get a preliminary injunction will be successful. Once the court permits a request for a preliminary injunction, the losing party has a powerful incentive to settle. Because the outcome of the preliminary injunction request typically results in an early termination of the case, the legal fees associated with the normal trademark case often are much less than if the case were fully litigated.
The Trademark Trial and Appeal Board
Although the TTAB does not handle infringement cases, it does hear cases in which one company or institution opposes another’s an attempt to register a mark. A trademark holder that believes registering a similar mark will infringe on existing trademark rights or create confusion among consumers can oppose the registration on those grounds. A trademark holder can also ask the board to cancel a registration that has already been approved. The holder can request a cancellation by arguing that the mark may cause consumer confusion, that it should not have been registered in the first place, or that the mark is no longer being used, among other grounds.
Preventing Trademark Infringement
It is important for holders of trademarks to understand the importance of using that legal protection to retain their exclusive rights. There are strict rules about the actions necessary to retain and protect trademarks. Matters such as ownership, actual reduction to practice, constructive reduction to practice, and procedures that protect trade secrets, trademarks, and trade dress, should be discussed with an experienced attorney before infringement or even litigation become material possibilities. Our attorneys have extensive experience protecting and enforcing copyright, trademark, and trade dress rights before state and federal courts and the Trademark Trial and Appeal Board. We have successfully represented clients from a wide variety of industries in adversary proceedings up to and including trial.
Speak with a Trademark Litigation Lawyer Today
If you are considering seeking trademark protection or want to protect your trademark from an unapproved infringing use, it is important that you seek the advice of an experienced intellectual property lawyer; one who can help you weigh your rights and options in selecting a trademark, registering the mark and, if necessary, defending it through litigation and other means. At Barshay Sanders, our trademark litigation lawyers have the resources and experience to handle a wide range of brand protection issues. We take pride in our personalized and proactive approach, taking the time to understand each client’s unique needs. To better assist our clients, Barshay Sanders also offers a number of creative legal fee arrangements to share the risk with our clients including partial and full contingency arrangements in many cases. Call us or contact us online to speak with an attorney today.