Is your Trademark at the Risk of Infringement?


Are you afraid of your trademark being stolen? Well, you should be because the cases of trademark infringement are on a rise these days. Trademarks are important business assets that protect business identity from competitors. Trademark infringement is quite common especially for famous marks. Moreover, sometimes it even escapes the prism of legal prosecution. Infringement upon a company’s trademark not only cause loss of revenue but also snatches away the distinctive quality. So, what is trademark infringement, and how to avoid trademark infringement?

What is the meaning of trademark infringement?

Trademark violation or trade mark infringement means unauthorized without permission) use of someone else’s registered trademark, image marks, or service marks. Such unauthorized use causes confusion, deception, or a misunderstanding about the actual trademark owner. The customers end up confusing between the products and services of the two companies. Fortunately, trademark owners have the option to initiate legal action against the infringer. And if the owner successfully proved the violation of his trademark rights, the court will order the infringer not to use the trademark in connection and also award monetary relief.

Do you know that trademark infringement can shatter a company’s name in the market? Read how trademark infringement is costing companies their reputation and revenue

What is a registered trademark? 

A trademark that is registered at a country’s national trademark office is called a registered trademark. It is a word, symbol, design, drawing, phrase, or combination that represents a company, business, or brand. A registered trademark is recognized by the nation’s government office, for example, USPTO in the United States for federal trademark registration. Registering a trademark comes with a set of exclusive rights under trademark law. These rights protect the company’s trademark from infringement claim and thus its reputation. A registered trademark also comes with a public notification of ownership.

What are some trademark infringement examples?

To make it easy to understand, here are some common trademark infringement cases:

  • The term “superhero” is trademarked by two companies: DC Comics and Marvel Comics.
  • Use of word mark “Apple” by Apple Corps (The Beatles) and Apple Inc. Steve Jobs)
  • Legal action by The 3M company against Changzhou Huawei Advanced Material Co Ltd for the use of 3N (similar to 3M). The 3M company won the lawsuit while 3M ended up paying damages for trademark violation.
  • The World Wildlife Fund (WWF) sued World Wrestling Federation (WWF) and won the trademark battle in 2001. As a result, the World Wrestling Federation changed its name and mark to World Wrestling Entertainment (WWE).
  • The trademark battle between a South Korean restaurant and luxury fashion giant Louis Vuitton. Louis Vuitton won the battle as the restaurant’s name (Louis Vuiton Dak) as well as logo and packaging highly resembled the designer’s iconic imagery. 
  • Trademark legal battle between Adidas and forever 21 where Adidas claims that Forever21’s products with a three-stripe design are “counterfeit.

How Trademark Infringement Works?

  • If someone believes that his trademark is at the risk of infringement by someone, he/she has the option to initiate a civil case against the infringer and claim treble damages. 
  • In the United States, if the trademark was registered with USPTO, then the owner can initiate legal action in federal court. But in the case of registration with the state’s office, they will have to use state common law.
  • Secondly, the trademark owner has the option to send a demand letter (aka cease-and-desist letter) to the infringer. The demand letter by a trademark attorney and helps to solve the issue amicably without court intervention.
  • The trademark owner can request the court to issue a preliminary injunction to stop the accused infringer from using the trademark while the case is undergoing court proceedings.

What if the Two Trademarks are similar but Not Identical?

Trademark violation involved the use of a mark whether it is similar or identical to the registered trademark. This is because many times infringers make minor changes and use a trademark to deceive the customers. For the United States, U. S. Patent and Trademark Office takes the likelihood of confusion under consideration, i.e., whether or not the buyer would believe that a particular product or service is offered by the original trademark owner.

A trademark examiner can reject a trademark application based on the likelihood of confusion in the following scenarios:

  • The two trademarks are similar-sounding
  • The two trademarks are similar in appearance
  • The type of products offered under respective marks
  • Trademarks that have a closely similar meaning
  • Misspellings of a registered trademark
  • Phonetic equivalents of an existing registered trademark
  • Unique stylization of a registered trademark

Similar commercial impression in consumer’s minds is also a major reason behind likelihood of confusion, i.e., consumers may confuse between the two marks. The reason behind this confusion is the similar impression of existing and applicant’s trademark. Here, one requirement for USPTO to refuse such a mark is that both these trademarks must belong to related goods and services and thus have a similar customer base. For example, the trademark GUCCI for sunglasses and GUCCI for bikes will not come under likelihood and confusion. This is because their goods and target customer base are different.  

What are the factors to determine trademark infringement?

In 1961, a set of factors emerged from a case where Polaroid Corp. was defending its mark. So, these key factors that determine trademark infringement are polaroid factors. These are the common polaroid factors under federal trademark law:

  • How close the goods are in nature?
  • The strength or visibility of the mark in relation to products
  • Degree of similarity in appearance
  • Marketing and distribution channels for original and duplicate mark
  • The level of sophistication, attention, and care taken by customers while selecting the product
  • The junior user’s objective (bad or good faith) in trademark selection
  • A piece of solid evidence proving that the defendant’s trademark is creating actual confusion among the consumers 
  • The distinctiveness of the senior user’s trademark
  • The similarity between the goods or services offered by the two trademarks in question

What are the Trademark Infringement Elements?

For a direct trademark violation case, the following are the constituents of trademark infringement:

  1. Unauthorized person– Someone who is not the owner/licensee of the registered trademark.
  2. Identical or Deceptively similar– The identical or deceptively similar criteria are takes the chances of the likelihood of confusion among the consumers under consideration. If the trademark is causing confusion among consumers, then it is a case of trademark violation.
  3. Registered Trademark– The trademark rights against infringement are available only to trademark owners with a registered mark. Trademark rights do not apply to unregistered trademarks, the common concept of passing off applies to such trademarks.
  4. Goods/ Services– To prove the infringement, there must be a similarity between the goods and services of the trademark owner and the defendant.

What is the Indirect Infringement of a Trademark?

Under indirect infringement, the person who instigates the direct infringer to violate the trademark rights is also held accountable along with the direct infringer. Thus indirect infringement goes one step ahead to punish the infringers increasing the, thus also known as secondary liability. Indirect infringement is of two types:

1. Contributory infringement

Under contributory infringement, the following two factors appear:

  • When a person is aware of the infringement
  • When a person materially contributes or instigates the direct infringer to perform the infringement.

2. Vicarious Liability

Under Vicarious Liability, the following three factors appear:

  • When the person can control the direct infringer’s actions but choose not to do so
  • If the person intentionally derives some monetary benefit from the infringement
  • When a person not only knows of the infringement but also contributes to it.

Indirect infringement occurs when someone is not directly violating the trademark rights but contributes to them. Generally, indirect infringement occurs in the employer-employee relationship. Also, if a company violates trademark rights, every person responsible for the company (except those who acted in good faith without the knowledge of trademark infringement) is liable. With the growing intellectual property ecosystem along with the e-commerce industry, the liability under indirect infringement gets extremely necessary to hold every responsible person liable.

What’s “Trademark Dilution”?

When a trademark is used without permission to weaken the distinctive reputation and quality of a famous trademark name, then it is called trademark dilution. Moreover, trademark dilution is different from trademark violation as it may or may not cause confusion among customers. Trademark dilution ends up diluting the name and popularity of the original trademark. Not monitoring your trademark can weaken its value with time due to trademark dilution. It occurs when a business copies the trademark of your client or uses a confusingly similar mark. In such a case, the trademark no longer remains unique to the product offered by your client.

Trademark dilution works by playing with the customer’s psychology and benefit from it. When consumers fail to link a trademark with its owner company, it gives leeway to competitors to use the mark illegally and take profits. Not only that, market competitors can even file an application requesting cancellation of your registered mark based on the ground of inadequate marketplace policing.

What are some examples of trademark dilution?

  1. Real-life example: Due to the long-term neglectedness of mark names such as Aspirin, Xerox, and Kerosene; the marks that were once strongly valued have become generic today. This dilution happened due to a lack of vigilance on mark’s name.
  2. Hypothetical example, Cadbury is a well-known household name for chocolate and related products. If someone starts using the Cadbury name for automobiles, then this will dilute the original trademark and their status. Proving trademark dilution in court is tough as it needs trademarks that are quite popular.

How to know if your trademark is infringed?

Here are the points to consider while closely observing your trademark’s infringement:

  • The infringer knowingly claims their registration and rights on your licensed trademark
  • Fake usage of the ®sign on unregistered marks.
  • Claiming a mark even if it has not been renewed after its expiry.
  • The infringer party intends to deceive or confuse the consumers by competing with a brand in the same domain.
  • The infringer changes a mark with another one
  • Using a false mark on products and services
  • Making changes in the original trademark before using it.

Do I Need a Trademark Infringement Attorney?

Trademark infringement can occur in various ways involving can come in many forms and may involve several different factors of proof. If you have a claim of trademark infringement, you may wish to consult with an intellectual property lawyer for advice. You may also wish to contact a lawyer or a law firm for infringement action.

Your lawyer can help you ensure that your product does not infringe upon other items. Moreover, it will enable you to take action for trademark dilution and and protect your mark from infringement. So, no matter on which side you are, whether you are the plaintiff or trademark defendant, it is important to seek help from a U.S.-licensed trademark attorney. An experienced trademark attorney will help you in legal proceedings, craft technical documents such as cease and desist letters, manage amicable negotiations, and save hefty costs on legal problems. 

Defenses to Claims of Trademark Infringement 

Some common defenses against the claim of copyright infringement are:

  • The trademark’s registration was fraudulent.
  • The licensee has abandoned the mark.
  • Trademark usage incorrectly represents the origin of the products or services.
  • Using the trademark implies an individual name and has no secondary meaning.
  • The accused was using the trademark even before its registration without any idea of the owner/plaintiff using the mark.
  • The defendant was using the mark in a fair manner with good faith.
  • The defendant was using it as a purely descriptive mark without any secondary meaning.

Trademark Infringement Remedies

Unauthorized use of a trademark is basically violating someone’s legal rights provided to them under the state’s intellectual property framework. Trademark infringement cases involve deceptive trade practices resulting in any or all of the following legal consequences:

  • Monetary reimbursement/actual damage relief for losses to the plaintiff covering damages borne by the plaintiff and cost of action (fee of attorney and costs associated with court proceedings)
  • An injunction for the infringer to stop producing, using, and distributing goods or services with the violated mark
  • Profits of the defendant
  • Seizure of goods with the unauthorized trademark

How to Protect a Trademark

The protection of your trademark is covered in two stages: before filing for your trademark and after getting the trademark registered.

Trademark protection before filing

The only sure shot way to ensure this is performing a comprehensive trademark search. A trademark search is an exercise done before trademark application filing. It helps to find out the identical and similar trademarks, both registered and unregistered. A professional trademark search helps to find our trademark availability and ensure that there are no similar marks in the market. Moreover, conducting a trademark search avoids the risk of future litigations against your company saving the company’s reputation.

How to conduct a trademark search?

A preliminary trademark search can be conducted on your own by using some simple tools.  The most common tools that are simple and easy to use for searching availability of a trademark are:

We have listed down some free tools to conduct a trademark search here: Free tools to conduct a trademark search

But, to make sure that there are no trademarks left uncovered, it is advisable to take help from a professional for trademark search. A professional is well-versed with a wide array of tools and software to make sure that the trademarks from all geographical areas are searched for.

Should I hire a pro for conducting a trademark search?

Yes, this is because a trademark availability search conducted by a professional will save you the expense of applying for a mark that might receive rejection if another company already has the rights for the proposed mark. The search results may also show whether your mark or a part of your mark appears as generic or as descriptive wording in other registrations. This may make it weak or difficult to protect. Besides these obvious ones, here are some other major benefits of performing effective trademark searches.

  • Flexibility to Amend Marks – By performing a trademark search beforehand, an applicant can find all the possible similar marks and amend his/her proposed mark’s name to one that is available for registration.
  • Saves Costs Associated with Litigations – Applicants can easily avoid litigations and the associated costs by performing effective trademark searches. This is because during their searches they can find confusingly similar marks that are already registered and hence can save themselves from legal disputes.

Protecting a Registered Trademark from Infringement

Trademark monitoring is the one-stop solution to protect your trademark from infringement. Registering a trademark is just the beginning of the long journey of trademark enforcement and protection. Monitoring your trademark protects brand reputation and allows companies to track trademark registries and detect applications that can potentially infringe the registered mark. When a company has a registered trademark, monitoring it to prevent its unauthorized use by someone else becomes indispensable. Trademark monitoring protects brand reputation by warning you of infringement and trademark dilution.

Why do you need trademark monitoring?

Trademark monitoring is necessary to protect your trademark rights as it warns you against any similar marks trying to infringe upon your intellectual property rights. Here are key points that make it important for every company to use trademark monitoring:

  • Trademark monitoring protects against rapid globalization and an ever-complicated economy. As the companies and businesses go global, the chances of one or another newbie infringing upon your mark also increase for both b2b and b2c industries.
  • Further, monitoring your trademark is more like damage control and enhances the owner’s freedom to multiply the horizon of your innovations.
  • By keeping an eye out for trademark infringement, you can even avoid impersonators and knock-offs. Not only this keeps your brand’s identity intact but also scales your company up in the market.
  • Trademark monitoring will shield your trademark rights and inform you beforehand about a trademark filing for a similar trademark takes place.
  • Timely action against any trademark infringement is the key to stopping anyone else from taking advantage of your biggest asset- trademark. Moreover, it provides you with an opportunity to defend your legal rights easily by sending cease and desist letters to the infringer. Also, you can initiate opposition and cancellation proceedings.

To know more about the likelihood of confusion, you can read this article: How to identify ‘Likelihood of Confusion’ States in USPTO rules?

How to Protect Unregistered Trademark from Infringement 

If your trademark is not registered and at the risk of getting infringed, then passing-off is an option to save the trademark. Passing-off is a law principle to stop the unauthorized use of similar products or services.

Factors considered for Passing-Off

  • Misinterpretation: A company or an individual can’t portray someone else’s products and services as his own.
  • Resemblance: The level of similarity between the two trademarks in question decides whether it is an infringement or not.
  • Goodwill: The plaintiff party should successfully prove that it has attained goodwill in the marketplace for the trademark in question. 

Why should you choose TMReady?

If you are a trademark holder, TMReady is a one-stop solution for all your trademark search and monitoring needs. We provide comprehensive worldwide as well as national trademark searches that ensure there is no trademark infringement. Moreover, our trademark monitoring service will help you keep a strong observant eye on the competitors’ activities. TMReady has a long-standing history of providing the best solutions for trademark infringement claim.If you want to conduct business globally, we offer multi-country trademark search and monitoring at reasonable price ranges.

Our professional team of experienced members uses conventional (manual) as well as non-conventional (advanced tools, software, and artificial intelligence). Along with this expertise, we offer a wide range of services at affordable costs to suit everyone’s needs and budget. You can choose any option or even get the service customized to suit your specific requirements. To know more about our services, visit us here.

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