Mandour & Associates handles trademark infringement matters including trademark misuse, name infringement, and trademark litigation matters. We also assist with trademark registration. To consult with a trademark attorney at our law firm, please feel free to contact us.
Trademark‚ trade dress‚ trade secret‚ and unfair competition laws generally prevent competitors from infringing on the goodwill of your trademarks and business. Contrary to popular belief‚ due to common law trademark rights you need not own a registered trademark for trademark infringement or service mark infringement to exist.
What is Trademark Infringement?
Trademark infringement is infringing on rights by using a common law or registered trademark without permission. 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. So how do you prove trademark infringement? There are eight factors that courts generally look at when determining whether there is a likelihood of confusion between two trademarks:
- The similarity of the trademarks at issue: This includes the appearance, sound and commercial impression of the trademarks. The more alike the trademarks are the more likely consumers are to be confused.
- The similarity of the goods and services: If the goods or services at issue are identical or closely related, this also makes confusion more likely.
- The strength of the plaintiff’s trademark: Whether the plaintiff’s trademark is fanciful, arbitrary, or suggestive plays into this analysis. The stronger the trademark, the more protected it is.
- Evidence of actual confusion by consumers: Evidence of actual confusion is the strongest evidence of trademark infringement.
- The defendant’s intent: If the defendant knew of the plaintiff’s trademark this factor weighs in favor of infringement.
- The market interface: If the products are sold side by side or to the same consumers this factor will weigh toward infringement.
- The degree of consumer care: If the product is cheap and consumers do not spend much time making a purchasing decision, this factor will weigh toward non-infringement.
- Likelihood of expansion: If the goods or services at issue are not overlapping but are in the natural zone of expansion of each other, this factor will then weigh toward trademark infringement.
For example, Uno Pizzeria & Grill and Uno the card game both use the word “Uno” in their name. Despite this similarity, trademark infringement is not likely between the two because the companies operate in different industries. Consumers are not likely to think that the pizza chain is related to the card game because the goods are different, and thus it is highly unlikely that the consuming public would be confused between the two trademarks.
Willful Trademark Infringement Claims
If an infringement of trademark is willful, a plaintiff will be entitled to additional damages in trademark litigation.
Protecting Your Trademarks from Infringement
It is important to note that a trademark owner has a duty to police infringing trademark use. 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 trademark uses or trademark abuse.
You can use free internet tools, such as Google alerts, to notify you of online uses similar to yours. It is also advisable to do some occasional Internet searches on your own especially if you operate in a fiercely competitive industry or if you have an unethical competitor.
We also advise having your trademark attorney set up a trademark watch which will notify you anytime a trademark similar to yours is either filed or published for opposition. If a similar trademark is filed, your trademark attorney should send a cease and desist letter immediately to prevent further trademark abuse. We have learned that the sooner you tell an infringer to cease use‚ the more likely you are to be successful. It may also be advisable to file a trademark opposition to prevent the trademark from registering, or a trademark cancellation after it registers. Lastly, you should consider a letter of protest to the U.S. Patent and Trademark Office which informs the examining attorney that you believe that the trademark is confusingly similar to yours.
When searching for similar trademark uses on your own, you should take alternate spellings into consideration, words that sound like your trademark, and words that have a similar commercial impression. For example, two trademarks for skating rinks – Lollipops and Jellybeans – were found by a court to be likely to cause consumer confusion. The reason for this is that both trademarks have a similar commercial impression.
Cease and Desist Letters
If you discover that someone is infringing on your trademark, often the first step is to send a cease and desist letter. A cease and desist letter notifies the other side of your rights and demands that the infringing activity stop by a certain date. If sent by a trademark attorney that litigates, the letter comes with an implied threat that if the infringing activity is not stopped by the deadline set out in the letter a trademark lawsuit will be filed.
Depending on the seriousness of the trademark infringement, you can also request that the infringer pay you a certain amount of monetary damages in order to compensate you for the harm that the infringement has caused including attorneys’ fees.
Responding to a Cease and Desist Letter
If you have received a cease and desist letter, you should immediately have a trademark attorney review all of the facts and law at issue in your situation and advise you as to your rights moving forward.
One of the first steps with a cease and desist letter is to determine who used the trademark first. If you can establish that you used your trademark before the other company, you may be able to show that they, rather than you, are the infringing party.
After determining priority of use, the next step is to consider the factors for trademark infringement mentioned above to make a determination as to whether consumers are likely to be confused between the two uses. Typically each case has unique issues that make confusion more or less likely.
It may be that the trademark owner is overreaching with its rights in an attempt to stifle competition. Some companies will send out cease and desist letters liberally to try to get quick wins with no intention of filing a trademark lawsuit. In other cases, a business owner simply does not understand the extent of their trademark rights.
Mandour & Associates – Trademark Infringement Attorneys
If you are involved in a trademark infringement complaint 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. In issues of trademark infringement, we aggressively defend our client’s rights. You may see our intellectual property litigation page which includes some of our past litigation results. We have offices throughout southern California including San Diego‚ Orange County and Los Angeles.
If you are interested in having our law firm assist you with a trademark infringement complaint‚ please contact us today.