You are walking down the street when you notice a box with a familiar looking symbol. It looks a lot like the symbol that you paid good money for a designer to create, so you could use to identify your company and products. The symbol on that box looks a lot like your trademark.
The nerve! You are going to sue for trademark infringement.
But wait; how can you determine if your trademark is being infringed? And if it is, how do you go about enforcing your trademark rights?
DEFINITION OF A TRADEMARK
A trademark is a recognizable design, sign, or expression that stands for a product or service. A trademark can be owned by a person, business, an organization, or any other legal entity. Trademarks are typically displayed on packages and labels but can be displayed on buildings and billboards.
An example is a certain fruit with a bite out of it that identifies the maker of some very popular electronic devices.
DEFINITION OF INFRINGEMENT
Infringement is the violation of the exclusive rights attached to the trademark if it is used without the owner's permission. If you were to try to sell a gadget you invented with the aforementioned fruit symbol on it, a very famous company would be taking you to court.
Your only defense would be if you had permission from the company to use its trademark on your gadget.
PROVING INFRINGEMENT
Three aspects of establishing infringement:
- Use
- In commerce
- Likelihood of confusion
USE
The first aspect, use, must be established first. It is the threshold to claiming infringement. To establish use, a trademark must exist and be present to claim infringement. Not all activity can be counted as infringement; placing products with the trademark on the shelf in a store or placing the trademark on an advertisement do not necessarily fulfill establishment of use.
"IN COMMERCE"
“In commerce” means the infringing activity has a significant impact on interstate commerce. It can mean moving products bearing a trademark across state lines as they travel from manufacturer to seller. It can mean sending product to another state in order to register a trademark. It can even be an advertisement on a billboard along an interstate highway or in media that is broadcast or distributed across state lines.
Considering the massive growth of online commerce, trademark infringement could be difficult to avoid if a seller is not very careful.
LIKELIHOOD OF CONFUSION
Finally, you must establish that there is a likelihood of confusion, the heart of any trademark infringement claim. Likelihood of confusion exists someone sees a symbol and assumes it represents a specific source of those goods but the goods are from a different, unrelated source.
Using the example of the bitten fruit, if you see that symbol on a set of ear buds, you will probably assume the ear buds are a product of the Apple technology company. However, they might be a product of rap singer Red Delicious who either did not realize that symbol was already in use or was trying to ride the coattails of a famous company.
Different standards are applied to the likelihood of confusion aspect depending on whether or not the products bearing the marks are direct competitors or not. If they are direct competitors, the court will accept the likelihood of confusion without additional evidence.
If the goods are completely unrelated, confusion is unlikely, and infringement is typically not found, except in cases of very famous trademarks, such as Nike or McDonalds.
If the goods are related but are not in direct competition for sales, the determination is more complicated. The court will look at the strength of the trademark owner’s mark, how similar the marks are, evidence of actual confusion, the type of goods involved, and a handful of other factors before determining the likelihood of confusion.
ENFORCING YOUR TRADEMARK
Before you take to the courts to claim trademark infringement, you must make certain that your trademark is active. Otherwise, you cannot stop others from using it.
An active trademark is one that is in use in the marketplace by the owner to identify goods and services. They do not have to be sold so long as you are offering them to the public under that trademark.
Once you go to court, you will be expected to establish several things:
- You have a valid trademark that is entitled to protection under the law
- Someone else used the same or a similar mark in commerce (sale or advertising) without the trademark owner’s consent
- Unauthorized use of the mark likely caused confusion to consumers as to the association of the trademark owner and the entity that used the mark without authorization
If you own a famous trademark, like Apple, another entity’s use of the Apple trademark could also be used to claim dilution. Trademark dilution occurs when the use of a trademark by an unauthorized entity weakens the owner’s reputation for quality (tarnishment) or renders it common through overuse in different contexts (weakening).
Dilution statutes may apply even if there is little to no likelihood of confusion as to the source of a product. If the rapper selling the ear buds with the Apple trademark was instead selling eye-shadow, Apple could still claim infringement and dilution.
REMEDIES FOR TRADEMARK INFRINGEMENT
Trademark law provides statutory remedies, including:
- Injunctive relief
- Accounting for profits
- Damages, including treble damages if appropriate
- Attorney’s fees in exceptional cases
- Costs
These remedies are cumulative; you could recover the infringer’s profits as well as damages or other awards.
Trademark infringement happens; sometimes it goes unnoticed and unchallenged.
However, if you believe your trademark is being used without your permission or authorization, you must establish that the trademark exists; that it is being used in commerce to impact interstate commerce; and that there is a reasonable likelihood consumers will be confused about the source of the product or service imprinted with trademark to claim infringement.
If you can prove trademark infringement, you are eligible for injunctive relief as well as damages, profits made by the entity infringing the trademark, and other awards.