Trademark Enforcement

Trademark infringement occurs when one uses a trademark without authorization to do so, or one who is authorized to use a trademark uses it improperly

A principal inquiry for infringement is whether a mark is likely to cause confusion about the source of goods and services (i.e., whether the consumer thinks that the goods and services are produced or endorsed by, or affiliated with, the plaintiff). 

There is no requirement for a side-by-side comparisonFactors considered in a trademark infringement analysis include:

similarity of the marks with respect to appearance, sound (e.g., Easy Clean and EZ Kleen), meaning (e.g., King Cobra and King Snake), and impression,

similarity in goods or services, marketing or trade channels, purchasers,

evidence of actual confusion,

strength of the mark,

bad faith (i.e., intentionally copying a mark to capitalize on good will), and

likelihood of expansion of goods or services.

Reverse confusion may also give rise to an infringement action.  Reverse confusion occurs when a subsequent user’s mark gains such notoriety that consumers may believe that a prior user’s goods and services come from the subsequent user. 

In the absence of consumer confusion, trademark infringement may still arise.  For example, a trademark may be diluted if the same or similar mark is used in connection with non-competing goods or services to cause the trademark to lose its capacity as a single source identifier.  There is no consumer confusion.  However, laws disfavoring dilution protect a strong trademark against losing its identity as a singular source. 

If trademark infringement is suspected, the trademark owner should conduct some due diligence to insure that the suspected infringer is not a senior user of the trademark. 

If the suspected infringer is believed to be a junior user, then a cease and desist letter can be sent to the infringer, demanding that it stop using the mark.  See Sample Cease and Desist Letter

In response to a cease and desist letter, the infringer may comply with the demands.  However, the infringer may not respond or may respond indicating it does not infringe

In any event, if the infringement persists, a lawsuit should be contemplated

Continued infringement of a trademark could dilute the strength of the mark. 

Failure to bring suit may also give rise to an estoppel defense, which may permit the infringer to rely on the trademark owner’s inaction as license to use the mark, which may prevent the trademark owner from enforcing its rights in the mark. 

Moreover, if the trademark owner knows or should have known of some infringement and does nothing, it may forfeit its rights under another legal doctrine referred to as laches.

Remedies for trademark infringement include injunctive relief, lost profits and punitive damages when appropriate, and attorney’s fees and costs in exceptional cases. 

The owner of a federally registered mark may also record the trademark with the US Customs and Border Protection and have US Customs prevent importation of goods bearing the mark.  See CBP Enforcement of Intellectual Property Rights.

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