Creating a trademark for your business is an important part of effectively marketing your products or services. It’s what sets you apart from your your competitors, and can be the difference between success and failure. For that reason, the law gives you the exclusive right to use this mark, whether it be a name, symbol, word or slogan.
Now, if someone else copies your mark, you may have grounds for a trademark infringement lawsuit. This is true whether or not you registered the trademark at the federal or state level, provided that you are currently selling products or services with that particular branding.
However, bear in mind that trademark infringement is not always obvious. Instead, there are a number of factors to consider, all of which focus on the degree to which a trademark is likely to cause confusion among potential consumers.
Your Duty to Protect Your Mark
It’s important to note that trademark laws are in place to protect the consumer. Specifically, these rules help ensure that a potential buyer can trust that the branding on the product or service comes from the company they associate with the mark.
That said, a trademark also protects your business. The law makes sure that no one else uses your name to make a profit. But, keep in mind that the focus is primarily on the consumer and how best to reduce confusion in the marketplace.
This distinction is important because the government does not protect your mark for you, or alert you about potential infringers. Instead, you are tasked with the responsibility of monitoring your mark for any unauthorized use.
Factors the Court Will Consider
With that in mind, in order to prove that someone is infringing on your mark, you must show that there is a likelihood of confusion between your products or services and those of the competitor. To this end, there are a number of factors the court will consider, including:
The strength of your mark: the more distinctive and less generic your branding, the more likely there would be confusion if someone else used a similarly distinctive mark. For example, the name Xerox is quite distinctive, so using “Xeroxi” for a printer would likely cause confusion.
The degree of similarity between the marks: note that two trademarks don’t need to be identical in order for a consumer to be confused. For example, if you called your orange juice company “Sun Kissed”, this is likely too similar to the existing “Sunkist” brand.
The similarity of the products or services: in some cases, a business can use an existing mark to sell a completely different kind of product. An example would be “Dove” soap and “Dove” chocolate. Here, the product industries are different enough that a consumer is less likely to be confused. Note that certain “famous” marks are considered so well-known that they cannot be used in any industry. We will explore this concept further in another blog.
The sophistication of potential buyers: if consumers generally spend considerable time researching a product, it is presumed that they are less likely to be confused by similar trademarks. For example, due to the expense, car buyers often pay more attention to the brand name than those purchasing a pack of gum.
Keep in mind that any evidence of actual consumer confusion would be helpful in establishing a claim for trademark infringement. Further, while intent to infringe is not required, it can help your case and may increase your damages award.
Now, one way to prove intent is by showing that you had an existing federal registration on your mark. In this case, intent to infringe would be assumed. Another way to prove intent is if you sent a “cease and desist” letter that was ignored.
What To Do If Someone is Infringing On Your Mark
If you believe that someone is using your trademark, the first step is typically to send the business a cease and desist letter. This is accomplished by you or your attorney. The letter asserts your legal rights and asks the company to stop using the mark.
If your letter is ignored or the organization denies your claim, the next step is to file a trademark infringement lawsuit. Where you file this matter depends on whether your mark is registered at the state or federal level. Federally registered marks require you to pursue your lawsuit by filing in the appropriate federal court. If you are registered only at the state level or not registered at all, you would bring your lawsuit in state court.
If the judge rules in your favor, the court will require the infringer to stop using your mark. You may also be awarded money damages.