Trademark Infringement Elements


Trademark Infringement Elements

Trademark infringement elements are the specific criteria that must be proven to succeed in a trademark infringement case.

Once a court decides that the elements of trademark infringement exist, the plaintiff may be entitled to a trademark injunction, damages or both.

Elements of Trademark Infringement

To prevail in a case, a plaintiff must prove three trademark infringement elements:

  • that it owns a valid trademark;
  • that the defendant used the same or a similar trademark in commerce without the plaintiff’s consent; and
  • that the defendant’s use of the trademark caused a likelihood of confusion.

See A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198 (3rd Cir. 2000).

A Valid Trademark

As an initial matter, the plaintiff must prove that it owns a valid trademark.  Ownership of a trademark federally registered to the principal register creates a presumption of ownership and validity.

While you’ll need to file a trademark application with the USPTO and have it register to gain the presumption of ownership and validity, this isn’t a necessity to have a trademark infringement case.  In fact, you have common law trademark rights from the moment you begin using a trademark in commerce.

Use By Defendant

Once a plaintiff has established ownership, next it must establish that the defendant used the same or a similar trademark in commerce without plaintiff’s consent.   Defendant’s use must be “in commerce” to be actionable.  For example, bidding on ads when a trademark is searched online may qualify as use, but it may not qualify as a use “in commerce” for purposes of the Lanham Act.  See 1-800 Contacts, Inc. v., Inc., 414 F.3d 400 (2d Cir. 2005).  The “in commerce” limitation originates with the ability of congress to regulate interstate commerce.

Likelihood of Confusion

While there are many nuances related to ownership and sue, proving that a likelihood of confusion exists is typically the crux of a trademark infringement case. This doctrine relates to whether consumers are likely to be confused as to the source of two separate products or services.  Since trademarks are meant to distinguish between brands, this is typically the most important element of trademark infringement.

A likelihood of confusion doesn’t require a trademark that is exactly the same, nor does it require that the goods or services be the same.  If the trademarks are within parallel industries, are spelled similarly, have comparable design aspects, sound the same when spoken aloud or could confuse consumers in any way including as to sponsorship, a likelihood of confusion may exist between the two.

Common Law Trademark Infringement Elements

The same trademark infringement elements apply when a trademark has not be federally registered.

Since common law rights are secured by the company with the earliest commercial use of a trademark, this means they could defeat a later-filed federal application.  If that common law use is limited to a certain geographic region however, a company could use a brand for years and still lose rights over it in other geographic regions if someone else registers the trademark or uses it in the other areas.  This is one of the many reasons that federal registration is advisable at the earliest opportunity.

Trademark Strength

One of the most overlooked elements of infringement is the strength of the trademark. Even if you’ve used a trademark commercially for years to distinguish your company from others, third parties may still be able to co-opt it in some way due to a lack of strength. Consider the following types of trademarks:

  • Fanciful: Fanciful trademarks are entitled to the highest level of legal protection. These are completely unique words created solely for use as a brand. The words Xerox, Clorox, and Pepsi, for instance, didn’t exist prior to their use as a trademark.
  • Arbitrary: Though not entitled to the same level of protection as a fanciful trademark, if unique in the industry arbitrary trademarks offer a very similar level of protection. An arbitrary trademark is when a business uses a preexisting term to describe their brand in an arbitrary way.  Since the word ‘apple’ has no relation to computing, it is an arbitrary trademark.
  • Suggestive: While there is some link between a suggestive trademark and the goods or services, they are still considered strong trademarks because they require mental pause on the part of consumers. While the name Airbus may not immediately bring a plane to mind, most people will deduce that it’s likely related to a plane.
  • Merely descriptive: Descriptive trademarks describe features of a product or service. International for an airline carrier or Speedy for oil change services would qualify. These types of trademarks have limited rights without acquired distinctiveness.
  • Generic: Generic words that identify a product or service cannot be protected. Blue Jeans, Computers, Trucks and Hamburgers are generic terms. These are never trademarkable since granting rights to one brand would unfairly hinder competitors.

If a court decides that your brand identifier is weak, it can severely damage your trademark infringement case.

Trademark Dilution

Even if a likelihood of confusion doesn’t exist, trademark dilution could be enough to constitute infringement. This usually only applies to famous companies whose brand reputation could be diluted by the actions of another party. It can occur through either blurring or tarnishment.

Blurring refers to a lesser-known company utilizing a famous trademark on their own differing products or services. Dissimilar goods would typically mean no infringement has taken place.  For example, consumers are not likely to confuse Delta faucets with Delta airlines.  However, if a brand identifier is truly unique such as a fanciful trademark, use by a third party in relation to any goods or services could diminish the trademark’s distinctiveness and thus be actionable.

Tarnishment is similar, but it includes an unsavory factor as well. If a lesser-known company starts making subpar products or selling items of a questionable nature, it could damage the reputation of the larger brand. Due to the potential for serious damage to the goodwill a company has built, this is typically seen as infringement.

Trademark Infringement Defenses

Even if it seems that all of the elements of trademark infringement are met, though, it doesn’t necessarily mean you have a valid case. Consider the following defenses often used in court:

  • Defendant was using the trademark prior to the plaintiff.
  • Trademark abandonment has occurred.
  • Use is permissible under the Fair Use
  • The trademark is merely descriptive or has become genericized.
  • Fraud occurred during registration.
  • Defendant was prejudiced by the owner not timely asserting its rights.
  • Trademark owner engaged in serious impropriety, aka unclean hands.

If these defenses are accepted by the court, a plaintiff will receive no form of relief and could very well lose their rights over the trademark in question.

Is Trademark Litigation Appropriate?

In many cases, a cease and desist letter achieves the outcome that the trademark owner is seeking. There are instances, however, when trademark litigation is the appropriate course of action.  Whether you should sue, though, can depend on your losses and the defendant’s intent. If your brand has suffered greatly due to the infringement, a lawsuit may be the only way to recoup losses. Legal action is also more appealing if it can be proven that the violations were willful since the case may provide enhanced damages.

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If you have questions about proving trademark infringement elements, please feel free to contact us today for a free consultation.


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