Trademark infringement is one of the most common forms of trademark litigation.
There are several remedies available to the owner of a trademark in the event of infringement or theft of a trademark, such as a logo or a slogan. Remedies are provided under a federal statute, the Trademark Counterfeiting Act of 1984 (18 U.S.C. § 2320), and are available only to owners of federally registered marks. Relief may also be obtained under the common law of some states.
Infringed trademark owners sue the infringer/defendant and seek compensation for the economic loss they have suffered as a result of the infringement of their trademark rights.
Awarding money as compensation in trademark infringement cases is not always necessary.
Remedies may include monetary relief, equitable relief, seizures and costs, and attorney’s fees.
The Lanham Act allows for the recovery of monetary relief:
- Actual damages
- Lost profits resulting from the infringement
- Accounting for infringer’s profits
- Triple the damages for willful (i.e., deliberate) infringement
Commonly, damages are awarded based on actual damages incurred, including any profits lost as a result of the infringement. In cases of willful infringement, these damages may be increased threefold. The infringer’s profits may also be recovered in cases of willful infringement.
In federal trademark infringement cases, punitive damages are generally not recoverable. Punitive damages are sometimes available under state unfair competition laws.
A court can order someone to do something or prohibit them from doing something by issuing an injunction. There are two types of injunctions:
- Preliminary injunctions: court orders made in the early stages of a lawsuit or petitions which prohibit the parties from doing an act that is in dispute (e.g., using the trademark)
- Permanent injunctions: final orders of a court that a person or entity discontinue doing certain activities permanently or take certain actions
Trademark owners can obtain preliminary injunctive relief if they demonstrate a likelihood of winning the case and if they can demonstrate permanent harm if injunctive relief is not granted. Additionally, the courts will consider the hardships an injunction imposes on the parties and any public interest involved.
The court has discretion whether or not to grant permanent injunctive relief, although it is often granted to the prevailing trademark owner.
The court can also order the seizure of counterfeit goods and the infringer’s business records by trademark owners.
Costs and Attorney’s Fees
A trademark owner may recover their costs and reasonable attorneys’ fees in extraordinary cases of willful infringement.
Plaintiffs can ask the court to issue an order mandating that the infringer cease all infringing activities, including using the infringing trademark. The injunction could require the infringer to cease all sales of the infringing products immediately, or it could require the infringer to cease sales after a reasonable sell-off period. Preliminary injunctions (meaning the injunction is only valid during the trademark infringement lawsuit) or permanent injunctions (meaning the injunction is issued after the trademark infringement lawsuit) are two types of injunctions.
The court may also limit injunctions based on the scope of geography (i.e., the defendant may not use the trademark within 100 miles of a particular city), the field of use (i.e., the defendant may not use the trademark in athletic apparel), or channels of trade (i.e., the defendant may not use the trademark when distribution involves wholesalers).
Court-Ordered Forfeiture or Destruction of the Infringing Goods
Plaintiffs can also ask the court to issue an order requiring the infringer to forfeit or destroy the infringing goods. A court order may specify a time period in which the defendant must produce/forfeit or destroy the infringing goods.
How Can I Tell if I’m Infringing?
To prove trademark infringement in court, a plaintiff must demonstrate that it owns a valid mark, that it has priority (its rights are “senior” to the defendant’s), and that the defendant’s mark is likely to confuse consumers about the source or sponsorship of goods or services offered under the parties’ marks.
Whenever a plaintiff owns a federal trademark registration on the Principal Register, there is a legal presumption of validity, ownership, as well as exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. During the court proceedings, these presumptions can be rebutted.
The court will generally consider evidence that addresses various factors to determine whether there is a likelihood of confusion among consumers. Key factors to consider in most cases are the degree of similarity between the marks at issue and whether the parties’ goods or services are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source.
In addition to these factors, courts often look at how and where the parties’ goods or services are advertised, marketed, and sold; the purchasing conditions; the range of potential buyers; 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.
Factors considered in a likelihood-of-confusion determination and the weighting of those factors vary from case to case. An infringement lawsuit’s outcome can be significantly affected by the amount and quality of evidence involved.
In addition to claiming the likelihood of confusion, a trademark owner may claim dilution if the use of your mark weakens the strength or value of the trademark owner’s mark by “blurring” the mark’s distinctiveness or “tarnishing” its image by linking it to something distasteful or objectionable-even if there is no likelihood of confusion.
Depending on the particular circumstances of your case, an experienced trademark attorney should be able to provide you with an opinion regarding the validity and strength of a trademark owner’s claims.
Remedies in Counterfeit Trademark Cases
The remedies available in lawsuits involving counterfeit trademarks are more severe than those discussed above. Still, there is one caveat: the trademark must have been registered with the Patent & Trademark Office (PTO) before counterfeiting took place.
Even if a wronged party is granted an injunction, the monetary remedies available in a counterfeit case far exceed those available for regular trademark infringement. In counterfeiting cases, the wronged party can seek actual damages or the infringer’s profits, whichever is greater. The court will award three times the amount, plus reasonable attorneys’ fees. Statutory damages are an appealing alternative.
Congress sets the amount of statutory damages, which currently ranges between $1,000 and $200,000 per counterfeit trademark per type of merchandise or service sold, offered for sale, or distributed. The statutory award can be as high as $2,000,000 per instance if the court finds that the use of the counterfeit mark was willful. The court may also order that the counterfeit goods be seized and destroyed.
Should I Consult a Lawyer About My Trademark Issues?
Remedies and resolutions for trademark issues are detailed and complex. Consult a trademark attorney to choose the remedy that works best for your needs. Moreover, a trademark lawyer can conduct ongoing research to ensure that no one else uses your trademark without your permission.
Additionally, in trademark infringement cases, a trademark attorney can guide you through the difficult and strict procedural requirements for litigation and bring out the core issues of your case.