How do I stop trademark infringement in the United States?

A trademark is a symbol, word, or phrase used to indicate to consumers who manufactured a product. Trademark infringement is the unauthorized use of a trademark on products in a manner that is likely to cause confusion, deception, or mistake about the source of the products.

When a trademark owner believes their trademark is being infringed in the United States, the trademark owner of a registered trademark can file a law suit in either state court or federal court. If the trademark has not been registered with the United States Patent and Trademark Office, than the trademark owner can only file a law suit for trademark infringement in state court. Most trademark owners choose to file trademark infringement law suits in federal court, but even if the trademark owner chooses to file in state court the defendant may have the case removed to federal court. The court in which the trademark owner chooses to file suit is a strategic decision based on a number of complex factors.

Once the trademark owner has decided where the lawsuit will be filed, he must decide what he will ask the court to do. If the trademark owner is able to prove infringement, available remedies may include the following:

a court order (injunction) that the defendant stop using the accused mark;
an order requiring the destruction or forfeiture of infringing products;
monetary relief, including defendant’s profits, any damages sustained by the trademark owner, and the costs of the action; and
an order that the defendant, in certain cases, pay the trademark owner’s attorneys’ fees.

To win a trademark infringement claim in court, a trademark owner must prove that it owns a valid mark, that it has priority, and that the infringer’s mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties’ marks. Priority means that the trademark owner was using the trademark before the infringer. When a trademark is registered with the United States Patent and Trademark Office that creates certain presumptions, there is a legal presumption of the validity and ownership of the mark as well as of the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. The infringer has the opportunity to overcome the presumptions if enough evidence can be presented to the court.

In addition to claiming likelihood of confusion, a trademark owner may claim trademark “dilution,” asserting that it owns a famous mark and the use of your mark diminishes the strength or value of the trademark owner’s mark by “blurring” the mark’s distinctiveness or “tarnishing” the mark’s image by connecting it to something distasteful or objectionable-even if there is no likelihood of confusion.

The key factors considered by the court in most trademark infringement cases are how similar the two marks are and whether the parties’ products are sufficiently related that consumers are likely to make the mistake that the products come from a common source. Other factors that courts typically consider include how and where the parties’ goods or services are advertised, marketed, and sold; the purchasing conditions; the range of prospective purchasers of the goods or services; 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. The amount and quality of the evidence involved can have a significant impact on the outcome of an infringement lawsuit.

A trademark attorney experienced in United States trademark law is helpful in evaluating the merits of you case and the best strategy to deal with trademark infringement.

If you have questions or comments for the authors of this blog please email us: admin@uspatentlaw.cn