IP 101: Elements of Trademark Infringement

  • By:Rachel V. Brenke, Esq.

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).  


What is a Trademark?

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:

  • Generic marks (never protectable) – the base name of a good or service.
  • Descriptive marks (protectable if it acquires secondary meaning; never protectable initially) – a description of the goods or services, usually using known terms of quality (“best”), geography, and source (such as surnames).
  • Suggestive marks (protectable) – The mark suggests a quality or characteristic of the good or service, but not expressly so, requiring a logical leap of the mind.
  • Arbitrary marks (protectable – strong) – a known word with no existing association with the good or service.
  • Fanciful marks (protectable – strongest) – made up words that did not exist until used as a trademark.

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.


Elements of Infringement


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.



Defenses to trademark infringement

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:

  • Different markets  – there is no likelihood of confusion
  • Nominative fair use  – the mark is not used in a trademark sense
  • Naked licensing  – a form of abandonment of the mark



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.

Photo by Rajan Stha on Unsplash

Rachel V. Brenke, Esq.
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Rachel V. Brenke, Esq.

Partner & Attorney at Connors and Brenke
Rachel Brenke is a Virginia and Texas business attorney focusing her practice in intellectual property law, contract law, business law, technology law, and civil litigation. Her Virginia law firm, Connors and Brenke, provides legal counseling and representation to businesses throughout the Commonwealth of Virginia and State of Texas.
Rachel V. Brenke, Esq.
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Posted in: Intellectual Property Law, Trademark