Defenses to Trademark Infringement

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 What Is Trademark Infringement?

Trademark infringement occurs when a trademark is used or reproduced without authorization. This may include logos or brand symbols.

Trademark infringement is similar to service mark infringement. A trademark infringement violation is serious and often involves aspects of deceptive trade practices.

Trademark infringement laws provide that a violation may result in the following legal consequences:

  • Monetary reimbursement for losses to the plaintiff;
  • An injunction that requires the defendant to stop producing, using, or distributing goods that include the trademark; and
  • Seizure of goods that use or incorporate the unauthorized trademark.

Trademark infringement may also involve using a trademark that appears very similar to the officially registered one. This is especially true in cases where a copycat trademark is used with the intent to deceive a consumer into thinking that the product is authentic.

In these types of cases, the factor examined to prove trademark infringement is whether there is a high likelihood of confusion that a consumer would believe that the product was made by the trademark owner. Additionally, there are several factors that may be examined to determine whether trademark infringement has occurred, including:

  • How close the goods or products are to one another;
  • The strength of the mark or how visible it is;
  • How similar the marks are in appearance;
  • The types of marketing and distribution channels used;
  • The degree of care that a normal consumer would exercise in selecting the item;
  • The intentions of the defendant in selecting the trademark; and
  • Evidence that the consumer who purchased the product was actually confused over the trademark.

For example, if a copycat item is distributed using the same marketing channels as the original brand item, it is more likely that a court would determine that trademark infringement occurred.

What Are Some Examples of Trademark Infringement?

One of the more common examples of trademark infringement occurs when a clothing manufacturer attaches a brand label to a generic item in an attempt to pass it off as an authentic item. These practices may also apply to other items, such as handbags and shoes.

How Can I Defend Myself against a Claim of Trademark Infringement?

There are four main trademark infringement defenses that may be available for a defendant against a claim of trademark infringement:

  • Doctrine of laches;
  • Estoppel;
  • Unclean hands; and
  • Fair use doctrine or collateral use doctrine.

The doctrine of latches states that one party neglected to assert a right or claims which, considered with the lapse of time and other circumstances that cause prejudice to the defendant, it operates as a bar in a court of equity. In other words, if a plaintiff delays too long in bringing a claim, they will not be able to bring an action against the defendant.

The legal concept of estoppel has three essential elements, including:

  • The defendant assumed a position of authority;
  • The plaintiff submitted to and relied upon that assumption; and
  • The plaintiff suffered injury as an immediate consequence of their submission and reliance.

Estoppel is a legal equitable doctrine that prevents a party from asserting a claim or a right that contradicts what they have previously said or done or what has already been legally established as true. It may be used as an affirmative defense or as a bar to relitigation of issues.

The unclean hands doctrine may be used when a plaintiff, who is otherwise entitled to relief, has acted so improperly with respect to the controversy that the public interest in punishing the plaintiff outweighs the need to prevent the illegal conduct of the defendant. In other words, the defendant may have committed a wrong but the plaintiff did as well.

The fair use doctrine is a legal doctrine that allows the unlicensed use of copyright-protected works in certain situations. It may involve the use of a trademark for a purpose other than what it is normally used for.

This most often arises in advertising cases, as long as there are not untrue cases. It may also arise in parody cases, so long as the parody is not used to promote competitive goods or services.

The collateral use doctrine allows goods that bear a preexisting mark to be used. In other words, if a party uses an item that is trademarked as a component of a more complex product, the doctrine of collateral use allows the party to identify the component by its trademarked name without being liable for infringement.

This is only true to the extent the party using the component does not deceive the public into thinking that the product, as sold, is actually marketed by the owner of the trademark.

What Is Trademark Registration?

Trademark registration is a process an individual or company uses to obtain exclusive rights to a:

  • Logo;
  • Symbol; or
  • Mark.

A trademark may be used in connection either with the sale of goods or providing services. Once a trademark is officially registered, it is referred to as a registered trademark.

This means that a trademarked phrase, symbol, or word may appear with the letters “TM” or an “R” within a circle displayed near the mark on the product. Trademark registration is important for individuals and entities who are seeking to prevent trademark infringement.

Having a registered trademark can also help increase sales for a business. This is due to the fact that the majority of customers tend to trust a name brand product rather than a generic product.

What Can I Recover if My Trademark Has Been Infringed?

Trademark infringement cases are some of the most common types of trademark litigation. There are several remedies that may be available to the owner of a trademark if their trademark has been infringed upon.

These remedies are provided under federal laws, the Trademark Counterfeiting Act of 1984 (18 U.S.C. § 2320). These remedies are only available to an owner of a federally registered trademark.

In some cases, relief may also be obtained under laws in some states. When an individual files a trademark infringement claim, they typically request compensation for the economic losses they suffered as a result of the infringement of their trademark rights.

There may also be other types of remedies available, including:

  • Monetary relief;
  • Equitable relief;
  • Seizure of the offending property and costs; and
  • Attorney’s fees.

Monetary relief may include:

  • Actual damages;
  • Lost profits resulting from the infringement;
  • Accounting for infringer’s profits; or
  • Triple the damages for willful, or deliberate, infringement.

Equitable relief may include an injunction. This is a court order that requires an individual either to do something or to cease doing something.

Should I Consult a Lawyer About My Trademark Issue?

The deadlines and regulations that are required for trademark registration may be very detailed and are often strict. If you need to register your trademark, it may be helpful to consult with a trademark attorney.

Your attorney can assist you with all of the necessary requirements and ensure you meet the deadlines required to register. Your lawyer can also conduct research to ensure that no other parties are using your trademark without your permission.

If you do encounter trademark infringement issues, your attorney can assist you with bringing a case against the infringer. If you have been accused of trademark infringement, it is important to have an attorney defending you, as the cases are often complex and a judgment against you may be detrimental for you or your business.

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