What is a trademark?

October 19, 2020
Joseph Holland

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.

For example, famous trademarks would include companies like Apple, Nike, McDonalds, and other popular brand names.

What is trademark infringement?

Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.

For example, if I were to start a shoe company called “The Nike Shoe Company” I would be infringing on the trademark owned by the real “Nike”. I would be infringing because I am unauthorized to use their brand name, I sell shoes, and my company would cause confusion with potential customers.

What will happen if someone sues me for trademark infringement?

A trademark owner who believes their mark is being infringed upon may file a civil action (i.e., lawsuit) in either state court or federal court for trademark infringement, depending on the circumstances.

If the trademark owner is able to prove infringement, available remedies may include the following:

  • a court order (injunction) that the defendant stop using the accused mark;
  • an order requiring the destruction or forfeiture of infringing articles;
  • monetary relief, including defendant's profits, any damages sustained by the plaintiff, and the costs of the action; and
  • an order that the defendant, in certain cases, pay the plaintiffs' attorneys' fees.

Conversely, a court may find instead that (1) you are not infringing the trademark, (2) a defense bars the plaintiff's claim(s), or (3) other reasons exist why the trademark owner is not entitled to prevail.

How do I know whether I'm infringing?

Most of the time, before another trademark owner takes you to court, they will send you a cease and desist letter. In the letter they will describe to you how your trademark is infringing upon their trademark and demand that you cease use of your trademark immediately.

After you receive this letter, the first thing you will want to do is check and see which one of you was the first to use the trademark. In the United States the law is first to use and not first to file. This means that if you are the first person to use the trademark then you have the right to continue using that trademark.

Whether you are the first to use the trademark or not, it would be best to contact an attorney with experience in these matters to discuss your options moving forward.

How do the courts decide on trademark infringement?

To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are "senior" to the defendant's), and that the defendant's mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties' marks.

Generally, the court will consider evidence addressing various factors to determine whether there is a likelihood of confusion among consumers. The key factors considered in most cases are the degree of similarity between the marks at issue and whether the parties' goods and/or services are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source.

Other factors that courts typically consider include how and where the parties' goods or services are advertised, marketed, and sold; the purchasing conditions; the range of prospective purchasers of the goods or services; whether there is any evidence of actual confusion caused by the allegedly infringing mark; the defendant's intent in adopting its mark; and the strength of the plaintiff's mark.

How Sumsion Business Law can help?

No matter what side of the trademark infringement you are on, Sumsion Business has experienced attorneys here to help. Please feel free to reach out to us if you are in need of help and consultation.


USPTO- https://www.uspto.gov/page/about-trademark-infringement

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