How do I Prove Trademark Infringement?

Trademark infringement is a violation of the exclusive right granted to a trademark owner to use their trademark in commerce. To establish trademark infringement, the following elements must be shown: (1) that the plaintiff owns a valid trademark; (2) that the defendant is using a trademark that is identical or substantially similar to the plaintiff’s trademark; and (3) that the defendant’s use of the trademark is likely to cause confusion, mistake or deception among consumers as to the origin or sponsorship of the goods or services.

What are Examples of Trademark Infringement?

An example of trademark infringement might be if a clothing company started using a logo of a diamond stone that was similar to the Volcom Stone logo, or if a company started selling sports drinks under the name Gatorpro (i.e., likelihood of confusion with Gatorade).

In these examples, the use of the similar trademark by the newer company would likely cause confusion among consumers who are trying to determine the source of the goods. This confusion could lead consumers to believe that the goods are affiliated with or endorsed by the company that owns the original trademark, when they are not.

It is important to note that trademark infringement can occur even if the infringing use is not intentional. For this reason, it is important for companies to conduct proper trademark searches and clearance procedures before using any trademarks in their business. This can help to avoid potential infringement claims and protect their brand.

Proving Likelihood of Confusion

While all the trademark infringement factors are important, the key factor in determining trademark infringement is likelihood of confusion. There are several factors to consider when determining whether a proposed trademark is likely to cause confusion with a pre-existing trademark in the marketplace. The factors include:

  • Similarity of the trademarks: This includes a comparison of the appearance, sound, connotation, and commercial impression of the trademarks;
  • Similarity of the goods or services: This includes a comparison of the nature, quality, and use of the goods or services being offered under the trademarks;
  • Similarity of trade channels: This includes a comparison of the trade channels through which the goods or services are sold, such as retail stores, catalogs, or the Internet;
  • Similarity of consumers: This includes a comparison of the typical consumers of the goods or services, including their age, education, income, and purchasing habits;
  • Strength of the pre-existing trademark: This includes an evaluation of the degree of recognition and commercial strength of the pre-existing trademark;
  • Evidence of actual confusion: This includes evidence of actual instances of confusion in the marketplace; and
  • Intent of the user of the new trademark: This includes an evaluation of the good faith of the person seeking to use the new trademark, and whether the person intended to create a likelihood of confusion with the pre-existing trademark.

No single factor is dispositive, and all relevant factors should be considered in a holistic manner in determining the likelihood of confusion.

What are Some Ways to Avoid Trademark Infringement?

There are several steps that a business owner can take to avoid potential trademark infringement claims, including the following:

  • Conduct a trademark search: Before using a new trademark or logo, it is important to conduct a comprehensive search to ensure that the trademark is not already in use or registered by another company. A trademark search can help to identify potential infringement issues before they arise.
  • Choose a distinctive trademark: Trademarks that are more distinctive, such as fanciful or arbitrary marks, are less likely to infringe on other trademarks and are easier to protect.
  • Register the trademark: Registering your trademark with the United States Patent and Trademark Office (USPTO) provides important legal protections and can make it easier to enforce your rights in the event of an infringement.
  • Monitor use of your trademark: Regularly monitoring the use of your trademark can help you identify potential infringement issues and take action to protect your rights.
  • Avoid using similar trademarks: Avoid using trademarks that are similar to trademarks owned by others, as this can increase the risk of infringing on those trademarks.
  • Seek legal advice: If you are unsure about the potential infringement risks of a new trademark or logo, it is a good idea to seek legal advice from an experienced attorney. An attorney can help you understand your rights and obligations, and develop a strategy for protecting your trademark.

By taking these steps, a business owner can reduce the risk of potential trademark infringement claims and protect their brand. It is important to remember that each situation is unique, and seeking legal advice from our attorneys can provide additional guidance and support.

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