The term “trademark” is defined by Federal law. The Lanham Act defines “trademark” as “any word, name, symbol, or device or any combination thereof” used by any person “to identify and distinguish his goods . . . from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”
Proving a trademark infringement case requires that you have a trademark that is protected by law. The first element of proof is proving that your trademark is registered with the United States Patent and Trademark Office (USPTO) and therefore satisfies the definition of “trademark” that entitles you to assert a trademark infringement claim.
Benefits Of Registering Your Trademark
Registering your trademark is not required, but registration provides you with many benefits. One of the most important benefits of registration is it creates a legal presumption of your ownership of the mark and the exclusive right to use it.
Another significant benefit to registration is it gives you the ability to bring a trademark infringement action in federal court. Under the Lanham Act, the holder of a registered trademark can bring a cause of action against another person for trademark infringement. The trademark holder will prevail if the trademark holder can show that 1) another party used the trademark without the trademark holder’s consent in any reproduction, counterfeit, or copy in commerce, 2) in connection with the sale, offering for sale, distribution, or advertising of any goods or services, and 3) the unauthorized use of the trademark is likely to cause confusion, or to cause mistake, or to deceive.
Maintaining A Cause Of Action
You can maintain a cause of action even if the infringing mark is not an exact copy of your trademark. If the infringing mark is similar enough to cause confusion among consumers about the source of the goods and services offered in connection with the mark, you will have a viable claim.
What To Do & How To Prove Your Case
If you discover someone infringing on your trademark, your first step should be to contact an experienced trademark attorney for help. You need attorneys who are specialists in this area of the law and know what to do to protect both your trademark and your brand.
Once a trademark attorney has reviewed your case, the attorney will most likely send a letter to the infringing party demanding that they cease and desist from using the trademark. This is aptly known as a cease and desist letter. In many cases, the cease and desist letter will have the desired effect and the infringing party will comply.
Proving Trademark Infringement
Sometimes, however, the infringing party will ignore the cease and desist letter. In that case, you may need to bring a trademark infringement suit. Your trademark attorney can help you determine the strength of your case.
To prevail as a plaintiff in a trademark infringement claim, you must prove that:
- you have a protectable ownership interest in the mark; and
- the defendant’s use of the mark is likely to cause consumer confusion.
First Element of Proof: You Have a Protectable Ownership Interest in the Mark
The first element of proof is that you must have a “protectable” trademark. For a trademark to be protectable, it must be “distinctive.” A trademark’s distinctiveness measures its significance to the purchasing public.
The distinctiveness of your trademark is important. Marks are generally classified in categories of increasing distinctiveness:
- arbitrary; or
If you have registered your mark already, you have already established the distinctiveness of your mark and the first element of your trademark infringement case. The process of registration provides you with proof of the validity of the mark, your ownership of it, and your exclusive right to use it. Registration also provides you with a strong legal presumption that the trademark is protectable.
Once you show proof that your mark is registered, the court will review such facts as which party first used the trademark, whether you allowed the mark to lapse due to inactivity, and whether you kept up with trademark renewals and updated contact information.
Second Element of Proof: Defendant’s Use of the Mark Is Likely to Cause Consumer Confusion
The second element of your burden of proof is the element that is usually the focus of the trademark infringement litigation. The success of your case will turn on whether the defendant’s use of your trademark or a trademark similar enough to yours that it created a likelihood of confusion among consumers.
The confusion created can be that the defendant’s products are the same as yours, or that the defendant is in some way affiliated, connected, or endorsed by you. In evaluating the likelihood of confusion about the source of the products or services, the court will consider the following facts:
- degree of similarity between the two marks, including the overall impression created by the marks’ looks, phonetic similarities, and underlying meanings;
- the degree of similarity in the goods or services and the marketing channels used;
- strength of your mark;
- evidence of actual confusion;
- the type of goods or services and the degree of care likely to be exercised by the purchasers of the defendant’s product;
- the physical proximity of the goods or services in the marketplace;
- defendant’s intent in selecting the mark; and
- the likelihood of expansion of the product lines
It is not unusual for two different businesses to have the same mark. This can happen as long as the goods and services are sufficiently different that no confusion is likely. For example, the name “AAA” is a common mark that is in use for many different goods and services across the country: automobile travel services, plumbing services, locksmiths, bail bonding, and many more.
What Are Your Remedies If You Succeed?
The remedies for a successful trademark infringement lawsuit include:
- Injunction prohibiting further infringement.
- Attorneys fees.
- Monetary damages including punitive damages may be available under the Lanham Act for acts of willful trademark infringement, but that will be dependent on the specific facts of each case.
The cost of litigating a trademark infringement case can be significant. You need to consult with the intellectual property law experts at KPPB LAW to evaluate your case and determine the best way to protect your rights.