Trademark Infringement

Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and services. A trademark is a legally registered symbol, logo, word, or phrase that identifies and distinguishes the source of goods or services of one party from those of others.

What Are Some Examples of Trademark Infringement?

Trademark infringement can take many forms. The following infringement examples provide further insight into various scenarios.

Brand Infringement

Brand infringement could include an online retailer selling electronics and using a name, logo, or design similar to that of Apple, which might lead consumers to believe they are purchasing products directly from Apple or an authorized reseller.

A beverage company creating a new soft drink with packaging that closely resembles the colors, font, and design of Coca-Cola, causing consumers to think they are buying a Coca-Cola product.

Trademark Counterfeiting

Examples of trademark counterfeiting include a street vendor selling fake designer sunglasses, imitating the style and logo of luxury brands like Ray-Ban or Gucci, with the intention to mislead customers into thinking they are purchasing authentic items.

Another example could be an online seller offering counterfeit pharmaceuticals, using packaging and labeling that mimics well-known pharmaceutical companies. Consumers purchasing these counterfeit pharmaceuticals are led to believe they are buying legitimate and safe medications.

Domain Name Cybersquatting

Domain name cybersquatting could include a person or company registering a domain name that is confusingly similar to a well-known brand with the intention of profiting from the brand’s goodwill. A person or company does so either by selling the domain back to the brand owner or using the domain for a competing business, or driving traffic to unrelated websites.

Keyword Advertising Infringement

Keyword advertising infringement could include a business using a competitor’s trademark as a keyword in search engine advertising, resulting in their website or advertisement appearing when consumers search for the competitor’s products or services. Using another business competitor’s keywords could lead to confusion about the source of the advertised goods or services.

Parallel Importation or Gray Market Goods

Examples include a retailer importing authentic goods from another country without the authorization of the trademark owner and selling them in a market where the trademark owner has exclusive distribution rights. Disregarding distribution rights by a trademark owner may result in the unauthorized sale of goods that do not meet the quality, safety, or regulatory standards of the destination country.

Trade Dress Infringement

An example of trade dress infringement could include a restaurant or retail store imitating the distinctive design, layout, and overall appearance of a well-known competitor. Imitating or copying another brand can cause confusion among consumers who might believe they are patronizing the established brand.

Product Packaging Infringement

An example of this could be a cosmetics company launching a new line of beauty products with packaging that is strikingly similar to that of a popular brand like L’Oréal. This striking similarity would lead customers to believe they are purchasing products from that particular well-known company.

What if the Two Trademarks Are Not Exactly the Same but Only Similar?

In determining whether trademark infringement has occurred due to the similarity of trademarks, courts will typically employ a multi-factor test that considers various aspects of the marks and the goods or services they represent.

Although the specific factors may vary by jurisdiction, the following provides a general overview of how courts approach trademark violations.

Similarity of the Marks

Courts will examine the visual, phonetic, and conceptual similarities between the two marks. They will consider factors such as the overall appearance, style, font, and color scheme. Even if the marks are not identical, if they are close enough to create confusion among consumers, it may be deemed infringement.

• Example: A new shoe company uses a stylized “M” that looks very similar to the McDonald’s “M” logo. Even though the companies operate in different industries, the similarity in logos could cause confusion among consumers, leading them to believe there is a connection between the two companies.

Relatedness of the Goods or Services

Courts will assess whether the goods or services associated with the trademarks are related or similar in nature. If the goods or services are closely related, consumers are more likely to assume that they come from the same source.

• Example: A company creates a line of smartphones and uses a logo similar to Samsung’s. The goods (smartphones) are directly related, and the similarity in logos could cause consumers to believe the new company’s products are manufactured or endorsed by Samsung.

Strength of the Plaintiff’s Mark

The strength of a mark refers to its distinctiveness and the level of recognition it has among consumers. A strong, well-known mark is more likely to be protected against similar marks, as consumers are more likely to be confused by the resemblance.

• Example: A new beverage company uses a logo that resembles Pepsi’s. Pepsi is a strong, well-known mark, so the similarity in logos is more likely to cause confusion among consumers, even if the new company’s beverage is not a direct competitor to Pepsi products.

Evidence of Actual Confusion

Courts may consider whether there have been instances of actual confusion among consumers resulting from the similarity of the marks. This evidence can be presented through surveys, customer complaints, or testimony from consumers who have experienced confusion.

• Example: A new restaurant chain uses branding similar to McDonald’s. If customers submit complaints or reviews indicating that they believed the restaurant was affiliated with McDonald’s, this could serve as evidence of actual confusion and support a finding of trademark infringement.

Intent of the Defendant

If the defendant intentionally chose a mark similar to the plaintiff’s to capitalize on the plaintiff’s goodwill or reputation, courts may be more likely to find infringement.

• Example: A software company intentionally chooses a name and logo similar to Microsoft, hoping to benefit from Microsoft’s reputation and lure customers. The court may view this as evidence of bad faith and find infringement.

What Is Trademark Dilution?

Trademark dilution is a legal concept that protects famous trademarks from being weakened or tarnished by the unauthorized use of similar or identical marks, even if there is no likelihood of confusion.

Dilution can occur through either “blurring” (when the distinctiveness of the famous mark is lessened) or “tarnishment” (when the famous mark’s reputation is harmed through negative associations).

Are There Any New Laws that Apply to Trademark Violations?

Yes, there are new laws as well as regulatory guidance related to AI-related trademark violations as well as brand protection. One of the main new laws is the Trademark Modernization Act of 2020 (TMA), which went into effect in late 2021.

This Act strengthened rights against infringement by providing a rebuttable presumption of irreparable harm that made it easier to obtain an injunction. In addition, it introduced new United States Patent and Trademark Office (USPTO) procedures, called expungement and reexamination, that can be used to cancel unused marks.

The Act created a uniform national rule that, when a plaintiff can show a likelihood of success on the merits, a presumption of irreparable harm will apply, which makes it easier to secure a preliminary or permanent injunction against an infringer. The USPTO also now has a shorter response time of three months for office actions that will make the registration process faster.

In addition to these issues, as AI usage continues to expand, the laws that govern its use will also likely be updated and expanded. Currently, updates to these laws are focused on digital replica rights, transparency, and accountability for AI-generated output.

There have been state-level bans on unauthorized AI, requirements for disclosing when AI is used in marketing, and court cases regarding liability for trademarked content in training data. In Arkansas, for example, regulations clarify that owners of AI-generated content are typically the human providing the input or the employer.

At the federal level, the USPTO has issued guidance stating that, although AI can help, a human inventor or author has to be recognized and AI cannot be listed as an inventor. There are also other proposed pieces of federal legislation and state laws that seek to prevent unauthorized use of someone’s likeness or voice through AI.

Trademark infringement laws are currently undergoing changes and updates as technology changes and expands. These laws are also subject to change or updates when a new presidential administration takes office. Because these laws are always evolving, it is very important to seek advice from a lawyer to determine the most recent regulations and requirements.

How Much Can I Sue for Trademark Infringement?

The amount a plaintiff can sue for in a trademark infringement case depends on the specific circumstances.

Damages may include actual damages (such as lost profits), statutory damages (set amounts defined by law), or even disgorgement of the infringer’s profits.

In addition to monetary damages, courts may grant other infringement penalties, such as injunctions, to stop the infringing activity and, in some cases, order the destruction of infringing materials.

In severe cases, violators may suffer diminishment or loss of trademark rights.

Do I Need a Lawyer for Trademark Infringement Issues?

It is highly recommended to consult with an experienced trademark lawyer if you are facing trademark infringement issues. A lawyer can help you understand your rights, evaluate your case, and provide guidance on the best course of action. They can also represent you in negotiations, dispute resolution, or litigation, ensuring your rights and interests are protected.

LegalMatch is an online legal matching service that can connect you with experienced trademark lawyers in your area who handle intellectual property law cases. By using LegalMatch, you can find a lawyer who meets your specific needs and budget.

To get started, you can submit your case details on LegalMatch’s website, and their platform will match you with several pre-screened attorneys who have experience in handling trademark infringement cases. You can review each lawyer’s credentials, experience, and client reviews and then select the one you feel is the best fit for your situation.

LegalMatch’s service can save you time and effort in searching for a qualified trademark lawyer and ensure that you are connected with an attorney who has a proven track record of successfully handling cases like yours.