8 Trademark Infringement Elements
As an entrepreneur, trademarks are a way of protecting your business and your brand. An important consideration is what would happen if someone else’s marketing looks suspiciously similar to yours. How would this impact your business? Trademark infringement can represent a real threat to your company and your reputation, forcing you to take legal action.
Trademark owners should protect their companies. You can protect your business by learning about the elements of trademark infringement, how to protect yourself if it appears someone is using an infringing mark, and how a California trademark litigation lawyer can help you defend your business. If you are a trademark holder facing a trademark infringement lawsuit as a plaintiff or defendant, call Trestle Law at +1 619-343-3655 for a complimentary consultation.
What is Trademark Infringement?
In 1946, the U.S. Congress enacted the Lanham Act to protect valid trademarks against false and misleading advertising, otherwise referred to as “trademark infringement.” Registered marks are governed under 15 U.S.C. § 1114, and unregistered marks under 15 U.S.C. § 1125(a).
Trademark infringement is when another party makes use of the trademark or service mark you use without your explicit permission. This often occurs when another business decides to “piggyback” off your brand’s success by unauthorized use of your intellectual property to market its own.
Infringement is committed when a trademark is used in connection with goods or services in such a way that it confuses a consumer or is pure deception. Consumer confusion or deception means the consumer doesn’t realize they are giving their business to a company other than the one they expect to patronize.
The Elements of Trademark Infringement
Trademark infringement does not require an identical name or logo for infringement to occur. Similarity in appearance, sound, connotation, commercial impression, and meaning can still lead to infringement claims. To pursue a trademark infringement claim, you must prove the following three factors:
Use of the mark
Use of the mark in commerce
Use of the mark creates a likelihood of confusion
If these three components are evident, you have substantial grounds to file a trademark infringement claim against the alleged infringer.
Valid and Legally Protectable Trademark
You can submit an application to obtain a registered trademark with the U.S. Patent and Trademark Office (USPTO) to receive specific legal protections and gain the exclusive right to a mark. Still, it doesn’t guarantee absolute immunity from infringement claims or challenges from prior uses. To claim trademark infringement, you need a valid and legally protectable trademark, which equates to having the ability to demonstrate clear ownership and trademark strength.
Remember that the USPTO issues trademark registration on a first-come, first-served basis. This is why it is always a good idea to register your use or intent of use once you develop your trademark.
Use in Commerce
In the U.S., you can establish trademark rights by use in commerce, not solely through registration. Even if you have yet to register your trademark with the USPTO, its use in commerce grants a measure of protection.
Prior users of a trademark can attack even a registered mark holder, leading to the potential cancellation of the previously registered mark. Whether you are defending your registered mark or disputing someone else’s registered mark, proving that you used the mark in commerce significantly strengthens your side of the dispute.
Likelihood of Confusion
Likelihood of confusion is a metric used to determine trademark infringement. When determining whether a substantial degree of similarity exists between two trademarks, the Lapp test is a standard way to identify whether the two marks are uniquely distinguishable or too similar. This test looks at the following eight elements.
Strength of the Trademark
The first metric to determine trademark infringement is assessing the original mark’s strength. Strength is evaluated on a scale. Marks that are considered weak and thus ineligible for registration are those that are generic. They are never registrable. Descriptive marks are the next weakest and are also not entitled to registration without demonstrating secondary meaning, also known as acquired distinctiveness. For a trademark to be strong, it must be suggestive, fanciful, or arbitrary.
Creating a strong trademark affords you more robust legal protection.
Trademark Similarity
The next factor a court will examine is the actual similarities between the two marks, including their appearance, pronunciation, and verbal translation.
Product Similarity
A court will also consider product lines and which industries the two marks are in use. A good example of famous marks appearing as a “curly W” is drug store Walgreens and the Washington Nationals, a D.C.-based MLB team.
Since these two have virtually nothing in common, consumer confusion is far less likely. However, if a competing drug store named “Whitmans” used a “curly W” or similar mark, this could pose a significant problem with a likelihood of confusion due to the similarity in types of goods sold.
Degree of Care Consumers Use When Purchasing the Defendant’s Product
Courts will also examine the degree of care consumers use when purchasing the defendant’s product. If two pickle jars are similar in price and design, the customer is not likely to pay close attention and may be confused. In contrast, purchasing a laptop would be different since more research is typically involved.
Defendant’s Intent
Intent is an essential factor. The court will examine whether the defendant’s use appears to have intentionally developed a trademark to mimic the original to cause confusion and, as a result, the defendant’s profits are a direct result of copying an existing brand. In that case, this is sufficient proof of infringement.
Actual Confusion
Evidence of actual confusion is another metric the court will consider. If it’s shown that consumers often confuse two products, this suggests the two trademarks in question may be too similar.
Similarity of Marketing Channels
Two products using the same marketing channels to similar consumer bases can cause confusion if the two trademarks are similar. A court will consider who is the target market of each company and where they are promoting their products to determine if there is significant similarity.
Overlap of Target Markets
Courts will also factor in the potential for the defendant’s and plaintiff’s marks to be used in overlapping markets in the future if expansion occurs.
Courts may also look at other factors to determine whether a likelihood of confusion will exist or potentially exist in the future.
What to Do If You Believe Your Trademark Has Been Infringed
If you believe someone has infringed your trademark, you should immediately take action by contacting a trademark lawyer. Your attorney can help you draft a cease and desist letter with all the necessary components. This document is often a first step to gauge an infringer’s willingness to cooperate.
If the alleged infringer doesn’t cooperate, you’ll want to file a trademark infringement lawsuit. If the alleged infringer used your trademark in one state, you’ll file in state court. The filing will be in federal court if it occurs in multiple states.
Defenses Against Trademark Infringement
Parties named as a defendant in a trademark infringement case have several options for a defense.
Use Before Trademark. Trademark law recognizes “first to use” before “first to file.” If a defendant can demonstrate they’ve been using the mark before the registration, they can use this as a defense.
Fair Use. A defense of fair use falls under “descriptive fair use” and “nominative fair use.” This refers to descriptive uses of a trademark, such as when comparing your product to a competitor, using a descriptive word that is part of another person’s trademark, or advertising that a product is related to another trademark, such as phone cases that are compatible with iPhones.
Parody. If the use of a trademark is clearly parodying a brand (think NBC’s Saturday Night Live), courts will usually uphold First Amendment rights.
Doctrine of Laches. This defense was designed to keep trademark holders from “sleeping on their rights." If there was an unreasonable delay in legal action from the trademark owner, you could use a laches defense.
Estoppel. This defense claims the plaintiff explicitly or implied a permitted use of their mark, also known as “acquiescence.”
Unclean Hands. In this scenario, the plaintiff has a legitimate case but acted illegally or badly with the infringement claim. Unclean hands rulings essentially punish the plaintiff for their behavior.
Contesting Registration. Newly registered trademarks (typically those for less than five years) may be contested.
The defense chosen for any alleged violation in the use of a trademark will vary based on the specific circumstances and facts associated with the case.
How a San Diego Trademark Infringement Lawyer Can Help
Your brand reputation matters, and your trademarks are important assets. If another party is using your mark for commercial use, chances are the result will be trademark dilution, which can substantially hurt your bottom line.
Working with a San Diego trademark infringement lawyer can protect your brand, provide trademark advice, and assist with trademarking. When you work with Trestle Law, we will do the following:
Evaluate the similarity of the marks
Determine if any use of a mark warrants an infringement action
Draft a cease-and-desist letter
Represent you in court if necessary
Work to help you get injunctive relief
Defendants may try to claim fair use, but if you can prove any of the eight trademark infringement elements associated, odds are strong that you will experience a successful plaintiff case. We will cover all the bases.
You Made Your Mark. Now Protect It.
Trademark law is very specific. Working with an experienced and knowledgeable trademark attorney is a decisive step toward protecting your business’s reputation and intellectual property. Let Trestle Law help you!
Our attorneys are passionate about intellectual property law, and our San Diego-based law firm can help you with trademark infringement. To learn more, contact us for a no-strings-attached complimentary consultation at +1 619-343-3655 or use our convenient online contact form.