Everything you need to know about Trademark Infringement

Unauthorized use of a trademark or service mark on or in connection with products and/or services in a way that is likely to cause misunderstanding, deceit, or misconception regarding the source of the goods and/or services is referred to as trademark infringement.

What happens if a trademark infringement lawsuit is filed against you?

Depending on the case, a trademark owner who feels his or her mark is being infringed upon may bring a civil action (i.e., lawsuit) in the court for trademark infringement.

If the trademark owner can demonstrates infringement, the following sanctions may be available:

• a court order (injunction) that the defendant stop using the accused mark;
• an order requiring the destruction or forfeiture of infringing articles;
• monetary relief, including defendant’s profits, any damages sustained by the plaintiff, and the costs of the action; and
• an order that the defendant, in certain cases, pay the plaintiffs’ attorneys’ fees.

A court may alternatively determine that (1) you are not infringing the trademark, (2) the plaintiff’s claim(s) is barred by a defense, or (3) there are other reasons why the trademark owner is not entitled to succeed.

How can you know whether you’re infringing on someone else’s intellectual property?

A plaintiff must show that they owns a valid mark, that it has priority (its rights in the mark(s) are “senior” to the defendant’s), and that the defendant’s mark is likely to cause possible misunderstandings about the source or sponsorship of the goods or services offered under the parties’ marks to support a trademark infringement claim in court. There is a rulings of the mark’s validity and ownership, as well as the exclusive right to use the mark nationally on or in connection with the products or services indicated in the registration, when a plaintiff has a federal trademark registration on the Principal Register. These presumptions can be refuted in court.

In general, the court will evaluate information addressing a variety of criteria in order to establish if there is a possibility of consumer misunderstanding. The degree of resemblance between the marks at dispute, as well as whether the parties’ products and/or services are sufficiently linked that customers are likely to believe (mistakenly) that they derive from a common source, are the main considerations evaluated in most situations. Other factors that courts typically consider are how and where the parties’ goods or services are advertised, marketed, and sold; the purchasing conditions; the range of potential purchasers of the goods or services; whether there is any evidence of actual confusion caused by the allegedly infringing mark; the defendant’s intent in adopting its mark; and the plaintiff’s mark’s resilience.

The considerations examined in determining the likelihood of misunderstanding, as well as the weighing of those elements, differ from case to case. And the amount and quality of evidence used in an infringement case can have a major effect on the results.

A trademark owner may also claim trademark “dilution,” claiming that it owns a well-known mark and that the use of your mark weakens or devalues the trademark owner’s mark by “blurring” the mark’s uniqueness or “tarnishing” its image by associating it with something distasteful or objectionable—even if there is no likelihood of confusion.

An competent trademark attorney should be able to give you with an opinion on the legality and strength of a trademark owner’s claims, taking into account the specific circumstances of your case.