The U.S. Patent and Trademark Office (USPTO) defines trademark infringement as the unauthorized use of a trademark on or in connection with goods or services, in a manner likely to cause confusion, deception, or mistake about the source of the goods or services or which misrepresents the nature, characteristics, qualities, or geographic origin or their or someone else’s goods or services. If someone is infringing upon your trademark, you could be losing substantial sums of revenue or suffer the loss of reputation and your market position. On the other hand, if you’ve been accused of violating someone’s trademark, you could be on the hook for a significant amount of court-ordered damages, both under the federal Lanham Act and state trademark laws.
Trademark infringement is serious, and the potential civil penalties are even more so. At Patrick, Harper & Dixon, we help monitor your trademark for potential infringement and defend alleged infringements of trademark and other intellectual property rights.
Trademarks derive their value from their ability to uniquely identify one company and alert a consumer as to the source of the goods/services they see in the marketplace. A trademark serves as a symbol of a company’s identity. It can include words, phrases, logos, and designs that enable consumers to recognize a product versus those offered by competitors. While they are often associated with large, multinational corporations, any sized business can develop its own trademarks.
How to Prove Trademark Infringement
In order to prove infringement, a plaintiff must generally establish the following:
- The plaintiff owns a valid mark
- The mark has priority (its rights are senior to those of the defendant’s)
- The defendant used the mark or an imitation of the mark in commerce
- The defendant’s mark is likely to cause confusion in the minds of consumers about the source of the goods or services at issue
Registration of a trademark is not required by law, but it does establish a rebuttable presumption that the party which registered the mark owns it and has the exclusive right to use it. The defendant can challenge this presumption in court.
Often, the likelihood of confusion element is the one most contested between the parties. Courts will look at a number of factors to determine this issue, including:
- The degree of similarity between the marks in question
- Whether the parties’ goods and/or services are sufficiently related, such that consumers would likely assume (mistakenly) that they came from the same source
- How and where the parties’ goods and/or services are advertised, marketed, and sold
- The conditions under which the goods and/or services are purchased
- The range of prospective purchasers of the goods and/or services
- Evidence, if any, of actual confusion caused by the allegedly infringing mark
- The strength of the plaintiff’s mark
- Why the defendant chose to adopt the mark it did
In addition to arguing the issue of confusion, a plaintiff may assert that the defendant’s mark caused “dilution.” This means the mark weakened the strength of the plaintiff’s mark by blurring its distinctive quality.
The evidence that will be used to either prove or refute allegations of trademark infringement will vary from one case to another. Ultimately, you could either be paying significant damages and court costs or you may lose control over your mark. This is where having experienced legal representation will make the difference.
Contact Patrick, Harper & Dixon Today
Whether your trademark rights have been infringed upon, or you’ve been accused of doing the same, reach out to the litigation team at Patrick, Harper & Dixon. We are ready to explain and defend your intellectual property rights. Give us a call today.