Question 1

What Is Trademark Infringement?

Accepted Answer

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.

Question 2

How to you Protect Your Trademarks from Infringement?

Accepted Answer

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.

Question 3

What is a Trademark Infringement Cease and Desist Letter?

Accepted Answer

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.

Question 4

How do you Respond to a Cease and Desist Letter for Trademark Infringement?

Accepted Answer

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.

Trademark Infringement