Trademark‚ trade dress‚ trade secret‚ and unfair competition laws generally prevent competitors from infringing on the goodwill of your trademarks‚ trade secrets‚ and business. Contrary to popular belief‚ due to common law rights you need not own a trademark registration for trademark infringement to exist. The key inquiry in a matter of trademark infringement is whether an ordinary consumer is likely to be confused between the trademarks. If the trademarks are confusingly similar‚ the prior user should request that the subsequent user cease use of the trademark. This commonly occurs in the form of a cease and desist letter. If the subsequent user refuses‚ trademark litigation may ensue. You may see more information at our trademark litigation page. You may also see our intellectual property litigation page which includes some of our past litigation results.
There are no hard and fast rules in determining whether a likelihood of confusion exists. Several factors must be considered including‚ but not limited to:
- The similarity of the trademarks;
- The similarity of the goods or services;
- The similarity of trade channels;
- The number and nature of similar trademarks in use on similar goods; and
- The extent of any actual confusion. The most important factors are often the first two.
It is important to note that a trademark owner has a duty to police infringing uses of its trademark. If a trademark owner does not enforce its trademark rights or otherwise fails to maintain quality control over the trademark (i.e. a naked license)‚ trademark rights may be lost. As such‚ for all important trademarks we strongly recommend that our clients utilize a trademark watch so that we are promptly notified of any infringing uses. We have learned that the sooner you tell an infringer to cease use‚ the more likely you are to be successful.
If you are involved in a trademark infringement or trademark litigation matter‚ we highly recommend that you seek the advice of a trademark lawyer before making contact with the other side. Part of the reason for this is simply that the infringer will take you more seriously. We have offices in San Diego‚ Orange County and Los Angeles. If you are interested in having our law firm assist you with a trademark infringement issue‚ please contact us.