In Focus: Trademark Infringement in the U.S.

  • Mar 30 2018
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  • Category: Blog

Infringing on a trademark can be costly as the responsible parties must typically pay damages to the trademark owner. Additionally, they will be forced to change their name, logo, or design, as well as any related marketing and advertising materials — also an expensive undertaking.  Finally, as they try to rebrand their businesses, customers may be lost. This is why it is crucial to work with skilled intellectual property attorneys during the trademark selection and registration phases. This article is a brief discussion on the elements of trademark infringement.

Trademark Infringement 101

Prior to branding a product or business, it is essential to be mindful of the basic elements of trademark infringement, starting with the likelihood of confusion in the marketplace between your business and existing trademarks or service marks. This is a key consideration for courts in trademark infringement cases, as well as the potential of confusion over similar goods and services.

Courts also consider the level of discrimination in the purchase process. More expensive items such as automobiles, for example, are typically given more scrutiny by consumers. Therefore, confusion and error in purchases is less likely. On the other hand, consumers don’t give much thought to lower priced items, such as laundry detergent, and may simply buy a product that looks similar.

Another factor the courts consider is the strength and similarity of a trademark. In this regard, a strong trademark often has a secondary or suggestive meaning. A weak one, however, is merely descriptive. Apple is a particularly strong trademark because it has assumed a secondary meaning, other than fruit, in the consumer electronics market. A strong trademark can also allow for the expansion of a product line into another market.  

The final element of infringement is trademark dilution. In short, this legal concept gives the owner of a famous trademark the right to prohibit others from using that mark in a way that would diminish, or dilute its uniqueness. Dilution as the basis of a trademark infringement claim is limited to famous marks, however. The owner of a non-famous mark, however, must be able to show that an alleged infringing use creates a likelihood of confusion regarding the source of a product or service.

The Takeaway

If you are in the branding or logo design process, you should enlist the services of experienced trademark attorneys to conduct a search of the U.S. Patent and Trademark Office’s online database of registered trademarks. In addition, they can also conduct due diligence of trademarks that may not be registered, but are currently being used in commerce. Finally, a trademark attorney can represent you in proceedings before the Trademark Trial and Appeal Board, or a trademark infringement lawsuit in federal court.