Sued for Trademark Infringement – Do you need an attorney?

What is a trademark?

Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services. (Source: USPTO)

Difference between trademark and service mark?

Trademark: A trademark can be a word, phrase or symbol or a combination thereof that it identifies and distinguishes  the source of the products of one party from those of others.

Service Mark: On the other side service mark is the same as trademark, except it identify and distinguish the source of a service, not goods. Both trademarks and service marks can be called “mark”.

Are trademarks, copyrights and patents the same thing?

No. A Trademark protects brand names and logos that are used on goods or services. And Copyright Protects original literary or artistic work. Patents protect an invention. If you have a patent, it protects your invention.

For example: To protect your invention, you would file for a patent if you invent a new radio device. To protect your brand name, you would need to register a trademark.

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Sued for trademark infringement? What trademark owner could do.

A trademark owner may file a civil lawsuit if they believe their mark has been infringed. This could be filed in either a state or federal court depending on the facts. In most cases trademark owners prefer to sue in federal court for infringement. It is possible for second party to have the case “removed”, even if the plaintiff prefers to sue in state court. If the trademark owner can prove that there is an infringement, the following options could be available:

A court order, directing the second party to stop using the accused marks. An order that requires the destruction or forfeiture infringing items Monetary relief, which includes the defendant’s profits and any damages suffered by the plaintiff; and An order that the defendant pay certain amounts to the plaintiffs’ lawyers’ fees.

How do i know if I am infringing?

A plaintiff must show that it is the owner of a valid trademark, that it has priority (its rights are “senior”) to the defendant’s, and that it is likely to cause confusion among consumers as to the source or sponsorship of goods or services under its marks. A federal trademark registration on a Principal Register is evidence that a plaintiff owns the mark. This legal presumption includes the right to use the mark in any country on or in connection to the goods or services. These presumptions can be challenged in the court. The court will generally consider evidence that addresses various factors in order to determine if there is confusion among consumers.

In most cases, the court will consider the degree of similarity between marks and whether goods or services are sufficiently related to cause confusion among consumers. Courts also consider other factors such as how and where goods and services are advertised, marketed and sold by the parties, the buying conditions, the potential purchasers of the goods and services, whether confusion is caused by the allegedly infringing marks, the intent of the defendant in adopting its trademark, and the strength and integrity of the plaintiff’s brand.

The particular factors considered in a likelihood-of-confusion determination, as well as the weighing of those factors, vary from case to case. The quality and quantity of evidence can also have an impact on the outcome in an infringement lawsuit. A trademark owner can also claim likelihood of confusion. This means that the owner of a trademark may claim trademark “dilution” (Trademark dilution is a similar violation to trademark infringement. In trademark dilution, the trademark is used in a way that “dilutes” or lessens the uniqueness of an original trademark.).

It asserts that the trademark owner owns a well-known mark and that the use of your trademark diminishes its strength or value by “blurring” or “tarnishing” its image. The mark could be connected to something objectionable or distasteful, even if there is no likelihood.

Do I need to hire an attorney for Trademark Infringement cases?

Trademark infringement may take many forms and require multiple proofs. An intellectual property lawyer can help you if you have any questions or concerns about trademark infringement. If you are concerned about infringement, you may want to consult a lawyer. A lawyer can help ensure that your product doesn’t infringe on other products and also protect your product from infringement.

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