Just like other forms of intellectual property, the owners of a trademark can have their rights infringed and sue the infringing party in court. Infringement can occur from copying a trademark directly or using a different brand, logo, or slogan which is confusingly similar to a trademark in the same industry. An attorney is helpful not only in trademark litigation but in helping to discover infringement or prevent it from occurring.
Unlike many other countries, in the United States trademark registration is not necessary to bring an infringement claim but it certainly helps document a trademark’s use. Trademarks can be registered with the federal government for interstate use or with a specific state if a company only does business in that state.
If a trademark is being directly infringed then the owner of the trademark merely needs to prove its use by the infringer. That does not mean direct infringement cases are a guaranteed victory but proving use of the trademark is simpler than establishing infringement from a similar mark.
In a case of a confusingly similar trademark a likelihood of confusion standard is used to prove infringement. Note that actual consumer confusion does not need to be proven, but it certainly helps a case. Each federal circuit has slightly different criteria for establishing a likelihood of confusion. Generally, a court will weigh the following factors: Strength of the plaintiff’s trademark, similarity between the trademarks, similarity of the goods and/or services, evidence of actual consumer confusion, the sophistication of expected purchasers, the quality of the defendant’s goods and/or services, and the defendant’s intent in adopting the trademark.
In either scenario an accused infringer does have available defenses. An accused infringer can claim a fair use defense. Classic fair use is when the accused infringer used the mark to accurately describe an aspect of its products and nominative fair use occurs when a trademark is used to actually refer to the trademark owner of the trademarked product itself. Trademarks can also be used in parodies.
If you need an attorney to monitor your trademark or are expecting to be involved in trademark infringement litigation, you can contact Stone Law at 732-444-6303 or leave us a message on our website.