As discussed in our post on the types of intellectual property, trademark is one of the most common types of intellectual property that many business owners are faced with, and one of the most overwhelming. It is important to know what it is, how it works and the elements of infringement so you can either keep yourself from infringing or identify if it is done to you.
Our firm actively works on registration of trademarks, as well as trademark infringement cases (both representing either the infringer or the one being infringed).
Trademarks are a word, symbol, sound, color or other device identified with a product or service (such as brand name, slogan, logo). A trademark is a creature of state and federal law, with the federal government exercising authority under Congress’ authority to regulate interstate commerce. There is also federal protection under the Lanham Act.
Unlike copyright, it is important to note that a trademark is a source indicator – a consumer need not know what particular business provides the good or service, simply that it comes from a single source. A trademark is viewed as reflecting the goodwill of a company and expressing to the public the quality or other characteristics of a good or service with which it is associated. Protection exists if the mark is distinctive. There is a well-known black letter test to determine inherent distinctiveness, based on a spectrum of protectability:
With an indefinite duration, the rights holder may exclude others from using confusingly similar marks or from causing actual confusion in the marketplace. However, the rights holder must also comply with the requirement of policing their trademark or they could lose their registration.
Trademark infringement can be a long-drawn out process if you don’t know exactly how to maneuver the system. While we provide these legal services, we like to educate our clients on the elements of infringement and how this may impact them.
For trademark infringement to occur, there has to exist a protectable mark and a likelihood of confusion or actual confusion. Registration of a trademark provides elevated damages and attorney’s fees, as well as also shifting the burden of proof from the registrant to the defendant to prove rights do not exist in the mark.
For non-registered marks, that is marks that receive common law tradearks protections at use, may only receive actual damages.
Alternatively, registered marks have the potential to receive treble damages and attorneys fees.
The first category of defenses to trademark infringement is trademark invalidity. In this case, the mark is not distinctive, prosecution estoppel/fraud is filed at the USPTO, may have superior users, or has been abandoned.
The second category to trademark infringement are as follows:
As you can see, copyright seems fairly basic as you work through understanding what it is, but can become quite complex as you enter into registration and enforcement of copyrights. If you have any questions, please feel free to reach out to our firm for an initial assessment of your situation.
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