Legal Action against Trademark Infringement

A company can obtain legal rights to a trademark by using it to identify products, trademarks, and services in a public market. This applies even if they do not register the trademark. The largest claim of legal rights to a particular trademark goes to the company that originally used the trademark for its services or products in commerce. Federal registration of a trademark provides protection by a federal law known as the Lanham Act. Although federal registration of a trademark is not required, federal registration provides benefits to the trademark owner and is generally recommended. These benefits include notifying the public that you are claiming rights to a trademark; legal presumption that you are the owner of the trademark; the exclusive right to use the mark nationally for the goods or services listed in the registration; and a foundation for foreign trademark registration and prevention of the importation of foreign products that infringe the trademark. The federal registration also grants the right to use ® the symbol that identifies the federal registration of a trademark or service mark. Failure to use the trademark symbol may limit claims for damages and profits pursuant to 15 U.S.C. § 1111. A person who registers a trademark with the Patent Office may publicly announce its registration by adding the words “Registered with the U.S.

Patent and Trademark Office” or by using the trademark symbol. If the declarant does not provide such notification, the court may decide that no compensation can be awarded because the defendant was not duly informed of the registration. A trademark infringement action occurs when a registered trademark owner believes that their trademark has been infringed by another party for financial reasons. Trademark protection is important for businesses, not only for their bottom line, but also for maintaining their reputation. If you need more information about the trademark infringement lawsuit, you can post your legal needs on UpCounsel`s marketplace. UpCounsel only accepts the top 5% of lawyers on its website. UpCounsel lawyers come from law schools such as Harvard Law and Yale Law and have an average of 14 years of legal experience, including working with or on behalf of companies such as Google, Menlo Ventures, and Airbnb. Trademark law is fair and uses traditional fair defences with the added element of a presumption that favours the owner for trademarks registered under the Lanham Act. In addition to the righteous doctrines of laughter, stubble and dirty hands, an alleged infringer may invoke the fair use and collateral use exception. Fair use allows comments or criticisms that otherwise involve the use of a trademark, provided that such use is made for purposes other than those normally of a trademark. If a party uses a trademark item as a component of a more complex product, the use of warranties allows the party to identify that component by its brand name. For more information about Lanham Act trademarks, see Certification Marks, Collective Marks, and Trademarks.

In Georgia-Pacific Consumer Products v. Von Drehle, 781 F.3d 710 (4th Cir. 2015), the court accepted the same language as sufficient justification for considering the Octane Rule in trademark infringement proceedings: “Of course, the Octane Fitness Court did not interpret the attorneys` fee provision of Section 1117(a). But the wording of section 1117(a) and section 285 is identical, and we conclude that there is no reason not to apply the Octane fitness standard when awarding attorneys` fees under section 1117(a). The court then held that a “district court” may treat a case as “extraordinary” and therefore award attorneys` fees to the prevailing party pursuant to Article 1117(a) if, in light of all the circumstances, it finds that: An experienced trademark attorney should be able to give you an opinion on the validity and strength of a trademark owner`s claims, taking into account the particular circumstances of your case. If the owner of a registered trademark sues the person who infringes his trademark, it is possible that the court will award financial damages. These civil damages are determined on the basis of the losses suffered by the trademark owner. If it is determined that the trademark infringement was intentional, the court may award damages that far exceed the actual amount of lost profits. If you own a trademark, you can also sue someone for trademark dilution if a well-known mark has been used by an unauthorized party. As a result, the reputation of the well-known brand has been damaged by the association with different products.

You must also show that the mark has already been used in interstate commerce for it to qualify for federal trademark registration. Otherwise, you will need to apply for a state trademark registration. This may limit the geographical area in which the trademark can be legally enforced. The courts regularly state that all factors are of equal importance. However, if two brands are not similar in terms of sound, meaning, and appearance, you don`t have to reach for the other factors. However, even identical marks cannot be considered confusingly similar if they identify completely independent goods and services. An example is Delta for faucets and Delta for®® transportation services. Two of the other factors are also addressed with greater importance: actual confusion and the intent of the alleged offender. Proof of actual confusion is not necessary to prove harm, but where such evidence exists, it is very difficult to overcome.

If the marks are similar in sound, meaning and appearance and the alleged infringer is intended to confuse consumers, courts will often find that the alleged infringer has succeeded in creating a likelihood of confusion. Evidence of actual confusion and intent of the alleged infringer, which is often difficult to find, may include testimonials from people accepting a counterfeit trademark and consumer statements, business records showing instances of confusion, accidental purchases, consumer complaints, and misdirected deliveries or phone calls. In the absence of evidence of actual confusion, brand owners can use tools such as survey results to show that consumers are likely confused about the source of a product. In Perfect 10, Inc. v. Giganews, Inc., No. 15-55500 (9th Cir. 2017), the court also decided to apply the Octane Rule to a trademark infringement case. The specific factors considered in determining the likelihood of confounding and the consideration of these factors vary from case to case. And the quantity and quality of evidence can have a significant impact on the outcome of infringement proceedings.

The information presented on this site does not constitute legal advice. It should not be seen as a substitute for legal advice. Reference to any particular organization, attorney, law firm, corporation, or website does not constitute an endorsement or recommendation by the USPTO. If you suspect trademark infringement, you need to know whether to sue for infringement or simply issue a trademark threat letter. If you decide to sue, you should get as much information as possible about the potential defendant. Ask the following questions: The bar association of the state in which you or your company resides and the various national bar associations have directories of licensed attorneys in the United States. Look for a lawyer who specializes in trademark litigation. For more information about onsite support, visit the Resources webpage. If a cease and desist letter does not solve the problem, it may be time to go to court. There are four important things to keep in mind when deciding on trademark infringement lawsuits: Successful plaintiffs can obtain injunctions against any other trademark infringement, unfair competition, or trademark dilution. In cases of infringement, unfair competition and intentional dilution, claimants may also be awarded financial compensation, including damages, profits and legal costs.

However, involuntary dilution measures are generally limited to injunctive relief. Researching brand availability before branding your products or adopting a business name can result in the selection of a more protectable brand or name and avoid future infringement claims. If the trademark owner is able to prove infringement, the following remedies may be available: Alternatively, any trademark owner can sue in state court, where the court can rule on trademark rights under federal or state and common law law. Trademark infringement lawsuits can cost between $120,000 and $750,000 on average, depending on the complexity of the case. While litigation is ongoing, you are responsible for paying your lawyer`s monthly bills. Although reimbursement of lawyers` fees is possible on the other side, these fees are only granted at the end of the case. In addition, resolving trademark disputes can take years, especially if the litigation is highly controversial. These are just the first steps in a legal dispute that can be very complicated. If you are sued for trademark infringement, a U.S.-licensed attorney with experience in trademark litigation can help you decide on the best course of action, which may include one or more of the following options: You can obtain federal registration for a trademark if the trademark is used in the ordinary course of business. and If it is a trademark, If the goods identified by the mark are sold or transported in a trade regulated by Congress or, if it is a service mark, the services identified by the mark are provided in that trade or in more than one state.

If the federal application is filed for use on the basis of good faith intent, a registration will not be granted until the trademark has been used in commerce. Trademarks can also be registered in any of the 50 states, and if a trademark is not used in interstate commerce, the trademark can only be registered in one state where it is actually used.