The following is a transcript of one of the most popular videos on our YouTube channel.
What exactly is trademark infringement? Well, the legal standard of trademark infringement we’ll get into in a little bit has many factors and variation slightly depending on whether you’re under federal law or whether you’re at the US Patent and Trademark Office or what circuit or what court you’re in front of.
But as a practical matter, trademark infringement is is when somebody else is using a protected trademark without permission. Of course, that trademark could be a word or a logo. It could also be a slogan or a sound or even a shape, any type of protected trademark. It does not have to be a registered trademark. It just has to be protected and that protection can come just from having used it in commerce. Of course, that protection is generally enhanced by having a federal trademark registration, and as we’ll see, when you have a federal trademark registration, it gives you additional benefits in dealing with trademark infringement situations.
There’s two main categories of infringement. The traditional one is likelihood of confusion, and by far most common and prevalent situation is likelihood of confusion. The second type of infringement situation is dilution and that’s where you have a famous brand under the law, which is entitled to some additional scope of protection and we’ll get to that as well.
Likelihood of confusion, is the typical trademark infringement claim. The purpose of this form of protection against infringement is to prevent the public from being confused or by someone who’s using a confusing or deceptive mark that’ll make people make a mistake about who’s offering one type of goods or another. The purpose of trademark law in general is to allow consumers to find the goods they’re looking for. And so it creates an action for people to protect their brand reputation by going after other people who are taking action that’ll confuse consumers and make it harder for them to find what they want to get.
The likelihood of confusion standard has several factors. The most important threshold issue is priority. To make a claim of infringement, you have to have rights that are superior to someone else’s. And that generally comes from use of a mark before they have started using the mark, and that’s also aided by having a registration for the mark before they have a registration, if they have a registration at all. Overall, the analysis generally revolves around every single time how closely related the goods or services are at issue and how similar the marks being used are.
So for example, if two businesses are both offering say automotive parts under marks that are similar, that looks like initially a very strong case for a trademark infringement. The junior user, the second one to use it, might have a problem there. But if it’s a situation where say Delta faucets attempts to sue Delta airlines, the marks are very similar, identical even, but the goods or services are so different, that is a weaker case. In fact, the goods can be so different in many cases that no infringement could be found under a likelihood of confusion theory.
Other important factors to consider include: How famous is the market asserted by the person claiming likelihood of confusion? Who are the consumers of the goods? Are the consumers the same or are the goods or services offered to different groups? Are the consumers sophisticated? Once you get beyond those first factors, there are many different varieties of the test and and all the tests balance 10 or more different factors. So it’s often a very important thing to have legal counsel who’s got an intuition for these things and can and can compare one case to another to figure out how strongly a claim is.
Another significant factor is how strong or weak trademark is, the plaintiff’s trademark is. A weaker or descriptive mark, like Virginia Auto Parts or something like that, is going to be harder to enforce, maybe even impossible to enforce. Against say someone who’s got Northern Virginia Auto Parts. I mean, what they’re saying is true if they sell auto parts and the purpose of the law is not to prevent people from being able to use a descriptive term. Whereas a more creative or even made up word is going to be entitled to a broader range of protection.
Also when comparing marks, people may point out that two names are not identical. Maybe one has corporation or LLC on the end or some other very common wording. And really that has almost no legal significance when you’re comparing two marks. It’s the most distinctive parts and the most memorable parts on consumers that are going to be the core of the analysis.
So if you are comparing Polycomm, which is the name on this phone, versus Polycomm Telephone Company, the fact that the other brand has “Telephone Company” added onto the end of it is almost insignificant because that wording is so generic and so common.
Additionally, it strengthens a case if if the infringed trademark has a registration. A federal registration grants the owner many evidentiary presumptions when they go to enforce the mark. It also entitles them to a certain remedies like damages in some cases that wouldn’t otherwise be available to you.
But remedies in likelihood of confusion cases, the ways that you can assert your rights under a likelihood of confusion claim is you could oppose someone’s trademark application, so prevent them from receiving a trademark registration that you believe is likely to be confused with yours. You could cancel an existing trademark registration if you’ve got superior rights to that. You can get an injunction that prevents them from using a confusingly similar mark on particular goods, or also prevents them from importing those goods into the country. And like we said, in some cases you can get damages either from the profits they’ve made using the confusingly similar mark or compensation for the damages that it’s caused you in say lost sales because people were confused. And with a federal trademark registration, you may be entitled to some additional statutory damages or tripling of the damages, or recovering attorney’s fees in exceptional cases. But there are defenses: trademark rights are not absolute and there are a lot of uses that will not be found to be confusing.
Let’s review “dilution” briefly. With dilution, as with likelihood to confusion, there are no black and white tests unfortunately. There is a lot of gray area in trademark it. There are a lot of balancing factors, a lot of possible defenses. And so it’s very hard to give a quick impression or hypothetical as to whether or not two things equals an infringement or not because there is such a variety of factors. I mean some cases, yeah, you can feel stronger about them initially, but there’s always a possibility that the underlying mark is weak or that priority is an issue, and many other gray factors.
In order to qualify for protection for dilution, a mark must be shown to be famous. And to be famous, it must be well known throughout the country, really almost well known in the media. I mean, there must be media coverage and must have a high volume of sales – a household name where a great majority of people, if you refer to that name know exactly what you’re talking about.
The courts initially began to create this dilution protection and then Congress enacted into law. And it entitles brands that meet this level of fame, which is out of all the brands in the country, a very, very small percentage. Those that qualify for dilution protection are protected against other marks that would blur or tarnish the quality of the famous mark. Really what that means is that anything that’s quite similar to it, regardless of the industry, could be a dilution. So a very well known soft drink maker, for example, that advertises on TV all of the time might be able to stop somebody from using the same name for car parts under dilution protection. Even though from a strict likelihood of confusion analysis, it’s unlikely that somebody in the car parts store seeing a brand name could associate that with a soft drink manufacturer. But dilution, because that mark may achieve such a level of fame would allow it to have an extra degree of protection that prevents somebody from using it really for any good or service or for almost any good or service.
But it is hard to qualify. and it is hard to prove. And it is,only truly very well known, very famous, very profitable brands that end up qualifying for dilution. If a mark qualifies for dilution protection, they may be able to stop other marks from becoming registered and they may be able to get injunctions against the use of other marks that would be, as I said, blurring or tarnishing that protected mark.
And one important distinction is likelihood of confusion is a confusion-based remedy. It’s to protect people who are confused. Dilution protects the mark owner even when no one is confused by the infringing use. Even when no one would think that Pepsi car parts come from Pepsi cola. Brand owners have to be concerned about dilution possibilities when they apply for a trademark or start using a mark; because you may be in a completely different industry from another mark, but if there is a truly famous mark out there, even if you’re so far away that you’re not going to be confusing, you may have to deal with with a dilution claim. So it’s always something you need to be looking out for.
What do you do when you find out that someone may be infringing your mark? You’ve got your trademark, you’ve been using it. Hopefully you have a federal trademark registration that gives you presumptive rights throughout the United States, and you see that someone’s maybe importing counterfeit or infringing goods or maybe someone’s just starting up a business and maybe doesn’t even know you’re aware or isn’t even aware of your rights. How do you proceed?
First of all, given the complexities of everything we’ve described, it’s always a good idea to have an attorney at this point to help. But the first step generally is notifying the other side of your rights, making it clear that you believe what they’re doing may be an infringement. Establishing communication, putting them on notice that any further action may be actionable, may be in violation of your rights. It is very important early on to figure out what the facts are and figure out how best to proceed. So making contact helps with that. And the most important fact is “priority.” You don’t want to accuse somebody else of infringing your trademark if it’s possible that they were first and then the tables could be flipped — if you’ve already written to them and acknowledged that you believe that the marks are very similar, and then it turns out that you were not the first one to use it, you’ve now dug yourself a pretty deep hole.
Another thing to do once you’ve established contact is determine settlement options. It may be that if you’re not using the exact same mark and you’re not using it on the exact same goods or services, maybe there’s things the two of you can do to cooperate to make sure that no one’s confused. Maybe the junior user will promise only to use the mark in certain ways, on certain goods, in a limited geographical area. Maybe there are ways to establish a licensing agreement between the two so that the side with the prior trademark rights will be able to maintain some control and ensure that no confusion occurs.
Oftentimes it comes down to just the junior user having to discontinue use or phasing out use over a period of time. But there were a lot of ways to resolve these disputes when you have two good faith parties who aren’t out there trying to trample on one another’s rights. And because litigation is expensive and time consuming for everyone.
But if you need to take legal action, you have several options if you’ve got a solid trademark rights and federal registration. You can oppose a pending trademark application that someone might’ve applied for that’s on its way toward registration. You can cancel a registration if they’ve already got one. You can sue for damages in court in some cases and possibly get an injunction against further use of the mark. Where there’s a domain name at issue that incorporates mark similar to yours, there are options for filing claims for cyber squatting under some circumstances that could help you capture that domain name back from a user who’s got bad intent and and maybe even recover some damages as well.
And also, if someone’s posting infringing content online that’s confusing consumers, there are situations where you can have those taken down as well. For example, a lot of trademark owners file take down notices with eBay to take down auctions of infringing products like counterfeit products for example. Some of those are very quick remedies. But generally litigation-based remedies are, they take the action to the courts and they’re things that certainly having an attorney involved, having an attorney for all of these is a very wise choice.
And generally the sooner you act, the better, because the longer an infringer is invested in building their brand and building their company, spending money on advertising or signage or whatever it is that they’re doing to promote it, the harder it’s going to be to convince them to give it up, and therefore the more protracted and expensive the dispute is likely to be. The quicker you can deal with it, the greater chance in general then you can settle it relatively quickly, relatively easily.
One other caution is that when a brand owner knows or should know about infringements but doesn’t do anything, they may be harming their rights for the future. After a certain period of time, it may be much more difficult or impossible to assert your rights against somebody because you’ve coexisted or you’ve even sort of implicitly blessed their use of it. And also, if you allow one or two others to use something that’s a little bit similar and then some others come along and they’re maybe a little bit more different, but they come along, and then all of a sudden you’ve got a handful of people that are using something similar to your trademark and it may be difficult to stop any of them or all of them because they’re all going to point towards each other and say that you’ve never policed your trademark in the past. And if the prior names you didn’t go after weren’t confusing, then how could the current instance be confusing and so on and so forth. The snowball approach.
If you try and sue someone in federal court for something that you’ve known about for a long time, good luck convincing the court that you deserve a preliminary injunction, that their use needs to be stopped right away until the court figures out whether or not there’s truly infringement. Because if you’ve permitted it for a number of years, the court is likely to say say, well, what’s wrong with a couple of months more while we figure it out? So yeah, there’s lot of reasons to take action swiftly.
These are all reasons to consult and experienced trademark attorney.
Same thing on the flip side: if you’ve been accused of infringement, whether it’s by a letter or by receiving a complaint or even a phone call, it is very advisable to talk to an attorney. Every case is unique, but the first thing you want to do is investigate the facts, evaluate how much merit the claim has, evaluate whether there are the same type of settlement opportunities that Mark discussed before. Some of that may depend on what one manner you were approached. Did they approach you in a manner that was open to talking about settlement or did they approach you in a very strong handed manner that seemed to indicate that they didn’t care about what your position was or whether you were interested in settling it?
But in in general you want to respond, because doing nothing is opening the door to a lawsuit in my opinion. Because if they’ve contacted you and corresponded with you and invited you to communicate back, if they don’t back from you, again because now they’re on notice that you’re, in their mind infringing it, they may feel obliged to see it through to fix that problem in some way. And if they’re not communicating with you, their only other option may really be to go to court. If they go to court, you’re now looking at having less leverage in settlement negotiations and spending more money and having a bigger situation to deal with. So whether you believe their claim has some merit that’s worth discussing or whether you believe it has no merit, it’s almost always a good idea to respond and to respond with the advice of counsel to a demand letter.
Of course, as we mentioned in the flip side, there are often many defenses that can be raised. Again, there’s a lot of gray area. But getting sued for infringement doesn’t mean that you are infringing it. It means that you have a difficult decision to make about how to defend it and how strong your case is and what the cost benefit analysis is of defending it. And that, again, comes down to how much is invested in this brand and again, why if you’re a potential plaintiff, you want to act quickly.
Some other interesting, more aggressive defensive maneuvers could be attacking the registration that the plaintiff relies on, if there’s a problem with it, if it’s fraudulent or if it’s descriptive or very weak or if has been abandoned. There are a lot of options there and sometimes it requires investigation, but generally you need to be asserting those counterclaims early. Otherwise you might lose the option to bring them at a later time.
And another aggressive defense is if you receive a demand letter, there’s a potential sometimes to actually be the initiator of the litigation to seek what is called a “declaratory judgment of non-infringement.” And then you turn the tables a little bit and you can control the venue, the location of the lawsuit, more in that case, which can also help reduce the costs if litigation is indeed inevitable. But that is also upping the ante and maybe closing the door, maybe not all the way, but closing the door at least partway on a quick settlement or resolution. And there are legal thresholds that must be met to be allowed to sue for declaratory judgment. But that’s something that defendants should consider.
Another thing that’s become more prevalent in the last few years is using social media and using publicity to garner support and put pressure on the plaintiff. A well known case of this was when North Face went after a teenage clothing company online called South Butt that was essentially a parody of North Face. By getting some cheap or free media attention and thousands of social media followers within a matter of days, the teenager was able to put huge pressure on North Face to back off basically and to settle the matter relatively quickly and relatively harmlessly. Another thing to consider in how you handle your case as a plaintiff is that North Face brought a lot more attention to this perceived trademark problem that otherwise never would have existed. I mean, sometimes you have to measure whether your tactic is right and how you handle it because you may be bringing attention to something that’s really not impacting your bottom line. Of course you have to worry about your legal protections as well.
But yeah, you still have to do a business and you’re still operating in a broader world and you don’t want to alienate customers. And yeah, trademark is all about reputation to start with. You don’t want do anything and enforcing your trademarks that undermines the ultimate goal to start with.
And again, we want to emphasize that what we’ve talked about today is not specific legal advice. It may not apply to your specific situation if you’ve got a particular legal problem. We highly suggest seeking legal counsel to get a specific opinion for whatever issues you may have.