There are many misconceptions around trademark infringement. For example, do you know the difference between a trademark, a service mark, and when it’s appropriate to take legal action if either has been infringed upon? Even individuals with years of business experience may not be able to answer this question.
The experienced intellectual property legal team at Eskander Loshak LLP is here to help. Learn the answer to the question “what is trademark infringement,” and when taking legal action is the right decision, below.
Trademark Law 101
To understand trademark infringement, you first have to understand trademark law. According to the United States Patent and Trademark Office (USPTO), a trademark is “a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.” A service mark is similar but used to distinguish the source of services, rather than the source of goods. The following information applies to trademarks but offers general guidelines for service mark infringement as well.
There are four different types of trademarks. These are:
- Generic Mark – Uses common language and is not able to be registered (“Bike Shop” is an example)
- Descriptive Mark – Uses language that describes the good (“World’s Best Watches” is an example)
- Suggestive Mark – Uses language that suggests the good (“Fast n’ Fresh” is an example)
- Arbitrary or Fanciful Mark – Uses language that has no connection to the good (“Nike” is an example)
While you can use any of these four types, you will likely want to select an arbitrary or fanciful mark as your trademark. These are the strongest type of trademark under the law and offer you the best protection in case of an infringement. Nike is an example of an arbitrary trademark because the word “Nike” is made up and bears no connection to shoes or other athletic apparel.
While you do not have to register a trademark with the USPTO, you should. This helps protect your intellectual investment and makes your case stronger should the need for litigation arise. Remember that generic trademarks are unable to be registered.
What is Trademark Infringement?
Now that we have explored the basics of trademark law, it’s time to answer the question, “what is trademark infringement?” While most lawsuits involving intellectual property are fairly complicated, trademark infringement is simple enough to understand.
What is trademark infringement? When another party – either an individual or business entity – uses language or visual elements that are the same, or incredibly similar, to your trademark.
Before taking legal action, you should send a cease-and-desist letter to the party infringing on your trademark. This is a letter in which you formally address their use of your trademark and give them a period of time to stop using it before further action is taken. If the party using your trademark is unaware of your mark, this gives them a good faith opportunity to stop. If they are aware of your mark, a cease-and-desist letter can be used in court as evidence.
Filing Suit for Trademark Infringement
If you have decided to pursue litigation, two major factors will affect your case. The first is something called likelihood of confusion. This is the idea that your average consumer would be confused by the use of the two similar marks. Likelihood of confusion takes into consideration the location of your company and the company that is infringing on your trademark, as well as whether the mark is used on competing goods. If there is the likelihood of confusion, then you have a strong case for trademark infringement.
If your trademark becomes famous, the issue of “dilution” also comes into play. Dilution occurs if a mark sufficiently similar to the famous trademark reduces, or is likely to reduce, the public’s perception that the famous mark signifies something unique, singular, or particular. The law on dilution considers everything from the distinctiveness of the trademark to the “duration and extent” to which you and the potentially infringing party have used the mark.
If you believe trademark infringement is occurring to your business, contact the business law attorneys at Eskander Loshak LLP. We have the experience and dedication needed to make sure your intellectual property is protected to the full extent of the law. Call us today at (954) 334-1122.