Learn how trademark infringement is defined and discover what kinds of infringement are prohibited. Consider what remedies are available to you, including a cease and desist letter to stop the infringement immediately. Potential damages, defenses, elements, and factors for determining infringement are covered, as well as how to deal with an infringing party.
Trademark Infringement Definition
Trademark infringement occurs when a trademark or service mark is used on or in connection with goods or services that are being sold in a manner that is likely to cause confusion on the part of the consumer.
A unique word, symbol, or series of words can constitute a trademark if it is legally registered with the U.S. Patent and Trademark Office (USPTO). These trademarks are specifically adopted to represent a business or its products. Once registered, the same symbol or combination of words cannot be used by any other business or product.
USPTO registration is not the only way to establish a trademark. The use of a “mark in commerce” is legitimate if the mark is used in conjunction with the actual sale of a product to the public with the specific trademark symbol or words attached.
Dilution vs. infringement
Trademark infringement happens when another party uses your trademark without your permission in a way that is likely to cause consumer confusion. In addition to bringing an action for infringement, owners of famous trademarks can also bring an action for trademark dilution under either federal or state law.
Dilution of famous trademarks
If a trademark becomes famous, like Nike or Xerox, for example, the trademark owner can sue for trademark dilution. Dilution arises when a trademark’s distinctive quality is blurred or tarnished by another mark.
Blurring occurs when the strength of the mark is weakened by connecting it with dissimilar goods, as, for example, by introducing Xerox brand bicycles or Nike brand cigarettes.
Unlike trademark infringement, customer confusion is not necessary to bring a claim of dilution. In fact, the opposite occurs. Knowledge of the trademark is needed to prove that the emergence of Xerox bicycles or Nike cigarettes dilutes the distinctive quality of the original mark.
Tarnishment occurs when the trademark is cast in an unflattering light, often through its association with inferior or unseemly products or services. In a recent case, the Toys”R”Us store successfully brought a claim of tarnishment against a pornographic website called adultsrus.com.
Actual harm required
Famous trademark owners can forbid others from using their mark in a way that would lessen its uniqueness or diminish its reputation. It is critical to note that dilution can only be established through evidence of actual harm to the famous mark. To obtain such evidence it’s possible to use answers from a survey or focus group evaluations to demonstrate that consumers perceive the famous mark less favorably than before.
Trademark infringement examples
The Nike “swoosh,” and the trademark Nike, identify the shoes made by Nike and distinguish them from other shoes made by Reebok or Adidas. If the swoosh logo or Nike label is used and sold on inferior products that would be a trademark infringement.
The likelihood of consumer confusion is the core issue of trademark infringement. Therefore, if there is little to no likelihood of confusion then there is no case. For example, consider the “Delta” trademark. Delta Dental, Delta Air Lines, and Delta Faucet Company can coexist without infringement because the products are different enough to prevent consumer confusion.
The Jack Daniels distiller encountered trademark infringement after a book was released with a cover resembling the Jack Daniels’ trademark. After choosing to send a pleasant cease and desist letter, the company received substantial positive feedback after the author posted the letter online.
Trademark Infringement Elements
A successful trademark infringement claim can be brought if a trademark holder demonstrates:
- Proof in ownership of trademark rights
- Proof that the infringer used a similar mark
- Evidence of the likelihood of confusion
Proof of trademark rights
Proof of trademark rights can be acquired in one of two ways:
- Using the mark in commerce
- Registering the mark with the USPTO under the Lanham Act found in United States Code 15 U.S.C. § 1127(a)
Using the mark in commerce
A mark in commerce refers to the actual sale of a product within the public marketplace with the specific trademark symbol or name attached. For example, suppose you are the first to sell “Sticky” brand chewing gum to the public. In that case, you will have acquired the priority to use that trademark brand in connection with the sale of chewing gum in your present or expected geographic area.
Registering the mark with USPTO
Proof of trademark rights is also established when you register the mark with the USPTO and do so with the actual intent to use the trademark in commerce.
Unlike the use of a mark in commerce, registration of a mark with the USPTO gives a party the right to use the mark nationwide. If the mark you seek to register is already being used by someone else, a senior or prior use right exists and the prior user is allowed to continue using the mark within its geographic area.
The infringer used a similar mark
In its purest sense, trademark infringement occurs when someone uses a symbol, name, or words identical to a registered trademark in connection with the sale or advertising of goods or services.
If the marks are close enough in appearance, sound, or meaning, they may cause confusion that constitutes infringement. So, for example, selling “Applet” computers may be unlawful because the phrasing is too similar to Apple computers. Altering the name to “Apricot” may still be arguably too close to the original mark because it may lead to mistakes or deception regarding the source or sponsorship of the product.
Using identical marks is clearly an infringement. You cannot cut the label out of a Chanel dress, attach it to your own garment, and then sell it. Such infringements also constitute willful actions.
Likelihood of confusion
If you own the rights to a particular trademark, you can sue for trademark infringement if someone else is using your trademark in a way that is likely to confuse consumers. The likelihood of confusion is the central focus of any trademark claim.
Determining whether a likelihood of confusion may exist when a consumer sees a particular trademark involves several factors, including:
- Strength of the original trademark
- Geographic proximity of the goods or services being sold
- Comparative similarity of the trademark
- Evidence that consumers were actually confused
- Marketing channels used by the infringer
- Degree of caution exhibited by the typical purchaser of the goods or services
- Intent of alleged infringer in selecting the mark
- Potential expansion in geography or product lines
Where both the product and the marks are similar it is more difficult to determine whether consumer confusion is likely. In one case, “Slickcraft” was deemed to be too confusing with the term “Sleekcraft” even though they sold boats to two completely different markets.
What Factors Determine Whether a Trademark Was Infringed?
The central focus of trademark infringement is determining whether consumers are likely to be confused by the sale of similar goods or services. These are the same factors used by federal courts to decide whether a trademark was infringed:
Strength of the original or senior mark
The first step in pursuing trademark infringement is to establish your right to make a claim. Either you used the trademark first, or you registered first with the PTO.
The strength of your trademark also depends on how distinctive your mark actually is:
- Descriptive words or symbols are only distinctive if they have acquired a “secondary meaning”. Windows is trademarked due to its secondary meaning as a computer product.
- Suggestive terms are inherently distinctive because a consumer has already made an imaginative connection to the word and the product it’s selling, like Xbox which is trademarked as a distinctive video game device.
- Arbitrary terms are intrinsically distinctive and receive a high level of protection because they bear no connection to the actual product, like the protected trademark of Apple which bears no resemblance to the fruit
- Fanciful terms are also innately distinctive and highly protected because they are created for the sole purpose of formulating a trademark with no association to the product being sold, like the words Kodak or Xerox, which have no meaning outside the context of cameras or copiers.
- Generic words or symbols are not distinctive and receive no protection if consumers use them to describe the overall product line, like “aspirin” or “cellophane”
Similarity of the marks
Without question, this factor is afforded the greatest weight by the courts. They will examine the appearance, pronunciation, and verbal translation of the two conflicting marks and determine potential consumer confusion when marks are viewed separately. Although Lexus cars and Lexis computer database services sound quite similar, they are not likely to be confused.
Relatedness of the goods or services
Relatedness does not necessarily mean the two products must be in the same industry. If the products compete directly and use a similar mark, a decision is made as to how the two products may be connected in the mind of the consumer. A bleach called “Clorit” could be easily confused with Clorox bleach.
Conversely, using the same term on a product that is completely unrelated will not likely rise to the level of an infringement claim. For example, Apple Computer and Apple Tires can likely be sold in the same marketplace without consumers thinking that computers are being made by a tire company or vice versa.
Actual consumer confusion
Evidence of actual confusion may be obtained from surveys or test groups and provides proof that two competing products and trademarks are being confused for one another. This is especially critical in trademark dilution claims.
Intent behind the alleged infringer‘s use of the mark
If an alleged infringer intentionally chooses a mark to cause confusion, that fact alone may justify upholding an infringement claim.
Moreover, in trademark dilution cases, damages are only available if a defendant willfully traded on the goodwill of the original holder’s trademark. Intentional copying tends to suggest that the alleged infringer believed they could divert some business away from the original user.
Similar marketing streams or methods
Methods of advertising and the location of respective products in stores will be considered potentially infringing on rights if the two products are targeting the same consumers.
Degree of caution exhibited by the typical consumer
The usual standard is a typical consumer exercising ordinary caution in the purchase of goods or services. However, if a potential purchaser has a higher level of expertise or the product is expensive or unusual, it is expected the consumer will not be so easily confused between two products despite similar marking.
Potential expansion of goods or services
A final consideration relates to the extent that the mark is already being used by others within a particular geographic location and whether an expansion can be expected. If that is the case, the original user of the mark retains the right to use the mark within that geographic location and its likely expansion, even if a nationwide trademark is subsequently registered.
Trademark Infringement Defenses
An alleged infringer can assert two main defenses, either fair use or parody. Because trademark law is based on an equitable doctrine, other defenses are also available. It is assumed that a defendant cannot assert possession of an original or senior trademark through first use or first registration.
Affirmative defenses
Descriptive fair use
Fair use describes the use of someone else’s descriptive trademark, but in a way that does not equal infringing upon an owner’s rights. It constitutes using the descriptive mark in good faith for its primary meaning and where no consumer confusion is likely.
Descriptive fair use allows the use of someone else’s trademark to describe products or services. For example, there would be no infringement upon Kelloggs’ trademark rights to the terms “All Bran,” if a cereal maker decided to describe its own cereal as consisting of “all bran.”
Nominative fair use
Nominative use occurs when the use of a term is required for purposes of identifying another producer’s product, not the user’s own product.
Fair use examples include:
- Use of the term “iPhone” on packaging for phone cases to indicate that it is compatible for use with an iPhone
- Opinions or truthful statements such as “Box A” is bigger than “Box B”
- Advertising for goods that are being sold or repaired like “We repair BMWs”
Parody
A trademark parody must simultaneously convey two contradictory messages. First, that the mark being used is indeed referencing the original trademark, and second, that it is not referencing the original trademark, but is a parody instead.
Parodies of trademarks are generally allowed if they are not too directly tied to commercial use. Some believe that artistic and editorial parodies of trademarks serve a valuable critical purpose and as such are entitled to some degree of First Amendment protection. For example, a photographer’s use of the Barbie trademark and signature clothing was permitted because the work was a criticism and a parody of “Barbie” itself.
Additional parody examples include:
- A Muppet movie’s use of a pig-like character named “Spa’am” was found not to violate Hormel’s rights in the trademark “Spam.”
- Posters bearing the logo “Enjoy Cocaine” were actually found to violate the rights of Coca-Cola and their trademarked use of the slogan “Enjoy Coca-Cola”
Other trademark infringement defenses
Trademark law is equitable and as such it applies traditional equitable defenses like:
- Laches. If you delay too long in asserting an equitable right, you will not be entitled to bring an action.
- Unclean hands. Violating an equitable principle, such as good faith, does not allow for remedies when the violator has “unclean hands”.
- Estoppel. You cannot go against contradictory actions or against what has been legally established as true
- Trademark misuse
- Fraud in obtaining the registration
- First Amendment applied to asserted rights
Trademark Infringement Damages
Damages for trademark infringement or dilution routinely consist of injunctions to immediately stop an infringer from using the mark and eliminate the continued infringement or dilution of goods or services. Note that in a dilution case, if there was no bad faith on the part of the defendant, damages are strictly limited to an injunction.
Actual damages
Actual damages describe the monetary relief available to a plaintiff who can prove that the defendant’s illegal use of their established trademark caused them to lose sales of goods or services. If there is a sudden drop in profits because the defendant’s product is cheaper or inferior, that could serve as support in a claim for actual damages.
Additional examples of potential actual damages include:
- Loss of income
- Repair to reputation
- Business losses
- Treble (or punitive) damages in bad faith cases
- Costs of bringing the action (separate from attorney’s fees)
Disgorgement of the infringer’s profits
Disgorgement is another equitable remedy requiring that any defendant who profits from illegal or wrongful acts must give up profits they made as a result of their illegal or wrongful conduct.
According to a recent Supreme Court case, a plaintiff in a trademark infringement lawsuit is no longer required to show that a defendant willfully infringed their trademark before receiving a disgorgement of the infringer’s profits. Gross negligence or complete disregard for the rights of others are still determinative.
Attorney’s fees and costs
The costs of filing and bringing a legal claim to court are generally covered under actual damages. To be awarded attorney’s fees, two things are required — registration with the PTO, and certain factors regarding intent.
Requiring an “ill motive” has been determined to be too rigid of a standard. Attorney’s fees may now be awarded after consideration of the strength of a party’s position both in law and in fact, and the unreasonable manner in which the case may have been litigated.
Trademark Infringement Remedies
Trademark infringement claims involve a number of remedies including actual damages and injunctions to stop either the infringement of the trademark or its dilution.
In a trademark dilution claim, the only remedy is an injunction, with some forms being more powerful than others. For example, court-ordered injunctions can be used to:
- Prohibit the continued use of the infringing mark
- Cancel the registration, if the mark has been registered
- Order destruction or forfeiture of the infringing goods
- Order geographic injunctions, such as limiting the use of the trademark within a set distance of a particular location
Other remedies include:
- Punitive (treble) damages on a showing of bad faith
- Statutory damages between $1,000 and $200,000 per violation. Depending on the case, willful abuse may allow for statutory damages as high as $2,000,000
- Some infringement cases, in rare circumstances, can lead to federal criminal charges that may result in probation or confinement in jail.
How to Avoid Trademark Infringement
Before you decide on a logo, phrase, domain, design, image, symbol, name, or series of words for your goods or services, you should research your product to determine what potential trademarks may already be out there. One method is to check the Trademark Electronic Search System to see if your trademark idea has already been taken.
In order to avoid trademark infringement, consulting with a trademark attorney may be in your best interests. Attorneys often use advanced databases and can review state laws pertaining to the registration of your goods or services.
How to Deal With Trademark Infringement
Determine whether trademark infringement has occurred
There are many factors used to conclude whether an infringement has occurred. Primarily, it must be determined that the use of a similar mark is likely to cause confusion between two products. The distinctiveness of the mark also plays a role in deciding whether infringement has transpired. See the above section related to factors that determine whether a trademark was infringed.
Send a cease and desist letter.
The most common method of dealing with trademark infringement is to send a cease and desist letter directing the infringer to stop using the trademarked material.
Benefits to using such a letter include:
- It stops infringement immediately
- It may serve as additional evidence if you have to go to court
- It gives notice of infringement, since in some cases, the infringing party may not even be aware of the infringement
As you prepare your cease and desist letter, be sure to include:
- Proof of your trademark rights
- Details of the specific infringement
- Timeline for the infringing party to stop using the trademark
You can download the template for a fillable cease and desist trademark infringement letter or use our step-by-step document builder.
Apply for your trademark as soon as possible.
Once a trademark is filed, it can potentially last forever, as long as you renew the trademark with the USPTO every ten years. There are many rights associated with the registration of your trademark, including the automatic right to bring a lawsuit with the presumption of ownership.
While a cease and desist trademark infringement letter is not legally enforceable, it can work as a threat if your trademark is already registered with the USPTO.
Monitor your trademark.
In order to protect your rights over a trademark, you must continually monitor to be sure it is not being used by third parties. If you are not diligent about defending your rights as the trademark owner, the originality of the mark may be diluted, and you may lose exclusive rights to the mark.
How to File a Trademark Infringement Lawsuit
Prior to filing a suit, consider using a cease and desist trademark infringement letter as the initial method of contact. The situation could possibly be resolved without court intervention.
Any trademark infringement lawsuit begins when the trademark owner files a complaint with a state or federal court alleging trademark infringement. In most cases, a plaintiff chooses federal court as their jurisdiction since registration with the USPTO is likely.
A summons and your complaint are served on the defendant requiring them to respond and appear before the court by a designated date. If they fail to timely file an answer to the complaint, the court may enter a default judgment against them.
The case follows the process of any other lawsuit, with the defendant submitting legal defenses to the lawsuit and the plaintiff seeking any and all available remedies. Litigation can be expensive and time-consuming and it can take years before a court delivers a decision. This makes the use of a cease-and-desist letter all the more appealing.
