Trademark litigation 101

A trademark is one of the most valuable intellectual properties a company or an individual can own. Words, symbols, and designs that distinguish the product or service of the trademark owner from its competitors are trademarks. Infringing on a trademark can threaten a trademark holder’s income source.

Trademark holders will use cease-and-desist or trademark litigation to protect their trademarks from Infringement. The trademark holders will argue that trademark infringement, or the other party’s unauthorized use of their brand to promote goods and services, will likely reduce and damage their trademark value.

A trademark owner infringed upon will file a civil suit in state or federal courts. Because most trademark infringements occur on a national or regional scale, trademark holders file more frequently in federal courts.

Trademark rights

Trademark rights can be permanent, unlike patent protections with a lifespan of 15 or 20 years. A trademark owner is required to renew their trademarks every ten years. The brand must also be used commercially during this period.

The United States Patent and Trademark Office can cancel a trademark if it is not renewed on time or deemed to no longer be in everyday use. After cancellation, the trademark owner can reapply to register a trademark. The owner of a trademark that is not currently in use must state when it was last used when the brand will be used again, and the reason for its current non-use.

The trademark owner submits a signed declaration (“Declaration of Use,” Section 8) to the USPTO, claiming their trademark has been used in commerce. The trademark owner provides information such as:

The trademarked goods and services;

Images of products with the brand on them (such as labels).

The trademark owner can also submit a declaration of incontestability.

This statement confirms that no legal action is pending at the USPTO or in a law court involving the ownership of the trademark.

What are the most common trademark claims?

A plaintiff in trademark litigation will typically make one or both claims about the trademark violation.

Probability of confusion. A trademark holder claims that the similarity between its trademark and the defendants will confuse the customers about who provides the products or services. A trademark holder can use the following factors to establish the likelihood of confusion:

  • The proximity of trademarks that are competing (same geographical region, similar or the same type of products/services, the same marketing channels);
  • The similarity between competing trademarks. For example, a design or name similar to the plaintiff’s trademark.
  • Consumer confusion testimony (for instance, a claim by a consumer that they bought a trademark infringer’s product thinking they were purchasing from the trademark owner).

Trademark Dilution. A trademark holder asserts that the trademark of the infringing parties will reduce the original brand.

Plaintiffs claim that an unauthorized, rival trademark with a similar image or name reduces their trademark’s distinctiveness, thereby diluting its worth to the trademark owner. Infringers may use a similar mark for controversial purposes (such as an adult business). The plaintiff can argue that such usage damages the trademark’s value by associating it with undesirable or controversial activities.

What happens when you violate a trademark?

If the trademark owner can prove Infringement in court, the following remedies are available:

Injunctions that prevent the defendant from using a trademark in the future

A court order that requires the destruction of infringing goods by defendants;

To compensate the plaintiff for business losses, the defendant may be ordered to pay monetary relief, including profits made by the defendant on the infringed goods/services.

What is the cost of using a trademark?

The cost of trademark infringement cases that reach trial is between $375,000 and $2 million per case.

How does the trademark application process work?

litigation can take up to a year in some jurisdictions, but it is usually longer. The plaintiff can convince a judge to expedite a case if they claim that a trademark violation threatens the launch of a new product.

A plaintiff who wants to prove trademark infringement in court must:

It is the owner of the trademark. It usually cites that the trademark is listed on the USPTO Principal Register. This gives it the legal presumption and ownership of the mark and the exclusive right of use nationwide for the goods and services listed.

Priority: Its trademark is older than the trademark of the defendant, which may also be registered at the USPTO.

The trademark owner can’t be the only one who sues an infringer. Parties who have exclusive or non-exclusive licensing to sell or distribute trademarked products/services can also bring a lawsuit. For a person or company to have standing, they must demonstrate a cognizable concern about the trademark infringement.

Plaintiffs can sue:

Primary or direct Infringement is a claim that the defendant has used, without their consent and in commerce, an imitation, variation, copy, or reproduction of a trademark in a manner likely to confuse and deceive.

Secondary Infringement The claim that the defendant has caused another party to infringe on the trademark or contributed in some way to the Infringement.

The defendant can counteract these claims in court with a variety of strategies, including

Contesting the trademark. Defense counsel can petition the USPTO Trademark Trial and Appeal Board to cancel the trademark. They can argue that the trademark registration was invalid (such as if the trademark wasn’t used in commerce), or that the defendant had a trademark before it.

Denying the alleged violation. The defendant claims that the trademarks are sufficiently different from those of the plaintiff to prevent confusion or dilution. The defendant may claim that the plaintiff’s mark lacks distinction (like an grocery store in Boston called Boston Grocery).

The plaintiff’s ability to convince the court of trademark infringement depends heavily on whether the test for “likelihood” has been passed. Each circuit court has a unique set of criteria. These range from the Second Circuit’s eight Polaroidfactors up to the Federal Circuit’s thirteen DuPont.

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