What Is Trademark Infringement Under the Lanham Act?

Trademark infringement is the unauthorized use of a trademark that is likely to cause confusion with another trademark, and is specifically prohibited under the Lanham Act, which is the primary federal trademark law in the United States.

The USPTO, which is the government agency responsible for overseeing trademarks in the United States, defines trademark infringement as the unauthorized use of a trademark or a similar mark on or in connection with goods or services that are likely to cause confusion with the trademark owner’s mark. In other words, trademark infringement occurs when a person uses a trademark that is the same or similar to another person’s trademark in a way that creates a likelihood of confusion among consumers about the source, sponsorship, or affiliation of the goods or services being offered.

The test for determining whether trademark infringement has occurred is whether there is a likelihood of confusion among consumers. This is determined by considering factors such as the similarity of the trademarks, the similarity of the goods or services being offered, the strength of the trademark owner’s mark, and the proximity of the goods or services in the marketplace.

Trademark infringement is a serious violation of trademark rights, and it can result in significant financial harm to the trademark owner. The Lanham Act provides a range of remedies, including injunctions, damages, and other forms of relief, to address trademark infringement and to compensate trademark owners for the harm caused by the infringement.

What Are The Most Common Trademark Infringement Claims?

The most common trademark infringement claims that are brought in federal court and before the Trademark Trial and Appeal Board (TTAB) of the USPTO are:

  • Confusing Similarity: This is the most common type of trademark infringement claim and it alleges that the defendant’s use of a trademark is likely to cause confusion among consumers about the source, sponsorship, or affiliation of the goods or services being offered.
  • Dilution: This type of claim alleges that the defendant’s use of a trademark is diluting the distinctive quality of the trademark owner’s mark. This may occur when a defendant uses a trademark that is similar to another trademark in a way that weakens the distinctiveness of the original trademark.
  • False Association: This type of claim alleges that the defendant is making false or misleading statements about its association with the trademark owner or its goods or services.
  • False Advertising: This type of claim alleges that the defendant is making false or misleading statements in advertising or promotion of its goods or services that are likely to cause confusion among consumers.
  • Cybersquatting: This type of claim alleges that the defendant has registered a domain name that is identical or similar to the trademark owner’s mark, with the intent to profit from the confusion caused by the similarity.

These are some of the most common trademark infringement claims that are brought in federal court and before the TTAB. The specific claims that are brought in a given case will depend on the specific circumstances of the case and the laws of the jurisdiction in which the case is being litigated.

How Is A Trademark Likely To Cause Confusion In The Marketplace?

Under the Lanham Act and the Trademark Manual of Examining Procedure (TMEP) of the USPTO, a trademark is likely to cause confusion with a third-party mark in the marketplace if it creates a likelihood of confusion among consumers as to the source, sponsorship, or affiliation of the goods or services being offered. This means that consumers are likely to be misled or confused about who is offering the goods or services or who is responsible for their quality.

The test for determining whether a trademark is likely to cause confusion with a third-party mark is a multi-factor test that takes into account several different factors, including:

  • The similarity of the trademarks: This factor looks at the visual, aural, and conceptual similarity of the trademarks, and considers whether consumers are likely to confuse one mark for the other.
  • The similarity of the goods or services: This factor looks at the similarity of the goods or services being offered under each mark, and considers whether consumers are likely to be confused about the source of the goods or services.
  • The strength of the third-party mark: This factor looks at the distinctiveness of the third-party mark, and considers whether it is a weak or strong mark. Strong marks are more likely to be protected from confusion with other trademarks.
  • The proximity of the goods or services: This factor looks at how close the goods or services are to each other in the marketplace, and considers whether consumers are likely to encounter them in close proximity to each other.
  • The likelihood of expansion of the product lines: This factor considers whether the parties are likely to expand into related goods or services in the future, and whether consumers are likely to be confused about the source of the expanded goods or services.
  • Any actual confusion: This factor looks at whether there have been any instances of actual confusion in the marketplace. Actual confusion can be strong evidence of likelihood of confusion.

These are the factors that are typically considered when determining whether a trademark is likely to cause confusion with a third-party mark. The weight given to each factor will depend on the specific circumstances of the case, and no single factor is determinative. The goal of the test is to determine whether there is a likelihood of confusion among consumers about the source, sponsorship, or affiliation of the goods or services being offered.

How Does A Trademark Dilute Another Trademark In The Marketplace?

Under the Lanham Act and the Trademark Manual of Examining Procedure (TMEP) of the USPTO, trademark dilution occurs when a trademark owner’s mark becomes less distinctive or less recognizable as a result of another party’s use of a similar mark. This occurs when a defendant’s use of a similar mark weakens the association between the trademark owner’s mark and its goods or services in the minds of consumers.

The test for determining whether a trademark dilutes another party’s trademark is a two-part test that looks at:

  • The strength of the trademark owner’s mark: This factor looks at the distinctiveness and recognition of the trademark owner’s mark, and considers whether it is a famous mark. Famous marks are more likely to be protected from dilution.
  • The similarity of the defendant’s mark: This factor looks at the similarity of the defendant’s mark to the trademark owner’s mark, and considers whether the defendant’s use of the mark is likely to cause dilution of the distinctive quality of the trademark owner’s mark.

These are the two factors that are typically considered when determining whether a trademark dilutes another party’s trademark. The goal of the test is to determine whether the defendant’s use of a similar mark weakens the association between the trademark owner’s mark and its goods or services in the minds of consumers. If a court finds that dilution has occurred, the trademark owner may be entitled to an injunction against the defendant’s use of the mark, as well as damages.

How Does False Association of Another’s Trademark Violate Trademark Law?

False association with another party’s trademark in the marketplace is a violation under the Lanham Act when a party uses another party’s trademark or a mark that is similar to another party’s trademark in a manner that is likely to cause consumers to believe that the goods or services being offered are affiliated, sponsored, or endorsed by the trademark owner.

This type of violation is considered to be a form of trademark infringement and can cause damage to the reputation and goodwill of the trademark owner. In order to prove false association, a trademark owner must show that:

  • The defendant’s use of the mark is likely to cause consumer confusion: This means that consumers are likely to be misled or confused about the source, sponsorship, or affiliation of the goods or services being offered.
  • The defendant’s use of the mark is likely to cause dilution of the distinctive quality of the trademark owner’s mark: This means that the defendant’s use of the mark is likely to weaken the association between the trademark owner’s mark and its goods or services in the minds of consumers.

The test for false association is similar to the test for trademark infringement, but it focuses specifically on the defendant’s use of the mark in a manner that is likely to cause confusion or dilution. If a court finds that false association has occurred, the trademark owner may be entitled to an injunction against the defendant’s use of the mark, as well as damages.

How Does False Advertising of Another’s Trademark Violate Trademark Law?

False advertising of another party’s registered trademark is a violation under the Lanham Act when a party makes false or misleading statements in advertising or promotion materials about the goods or services that are being offered, and such statements are likely to cause confusion, deception, or mistake as to the origin, sponsorship, or approval of the goods or services.

The Lanham Act prohibits any false or misleading advertising that misrepresents the nature, characteristics, qualities, or geographic origin of goods, services, or commercial activities, and also prohibits false or misleading descriptions or representations that are likely to cause confusion as to the affiliation, connection, or association of the advertiser with another person, or as to the origin, sponsorship, or approval of the goods, services, or commercial activities.

If a court finds that false advertising of another party’s registered trademark has occurred, the trademark owner may be entitled to an injunction against the defendant’s use of the false or misleading statements, as well as damages for harm to its reputation and business.

What Is Trademark Cybersquatting?

Trademark cybersquatting is the act of registering, trafficking in, or using a domain name that is identical or similar to a distinctive trademark or service mark of another party, with the intent to profit from the goodwill of the trademark owner, or with the intent to mislead consumers as to the source of the goods or services being offered.

Trademark cybersquatting is prohibited under the Lanham Act because it causes confusion, deception, or mistake as to the source, sponsorship, affiliation, or endorsement of the goods or services being offered, and it dilutes the distinctive quality of the trademark owner’s mark. Additionally, trademark cybersquatting can harm the reputation and goodwill of the trademark owner and interfere with its ability to effectively promote and market its goods or services.

If a trademark owner can prove that trademark cybersquatting has occurred, it may be entitled to an injunction against the use of the infringing domain name, as well as damages and any profits that the cybersquatter has earned through its use of the domain name. The Lanham Act provides a cause of action for trademark owners to pursue against cybersquatters in federal court, and it also provides a streamlined administrative remedy through the Uniform Domain Name Dispute Resolution Policy (UDRP).

Where Can I Resolve a Trademark Cybersquatting Dispute?
Trademark cybersquatting claims can be brought either before the Trademark Trial and Appeal Board (TTAB) or in Federal Court.

In the TTAB, a trademark owner can seek cancellation of a federal trademark registration on the basis of cybersquatting, if the trademark registration was obtained in bad faith. In such a case, the TTAB can cancel the registration, which would make it much more difficult for the cybersquatter to enforce their rights in the infringing domain name.

In Federal Court, a trademark owner can seek relief for trademark cybersquatting under the Lanham Act, including injunctive relief, damages, and attorney’s fees. Federal Court is also the venue for pursuing a claim for statutory damages under the Anti-Cybersquatting Consumer Protection Act (ACPA).

The choice of whether to bring a cybersquatting claim before the TTAB or in Federal Court will depend on the specific facts of the case and the goals of the trademark owner. In some cases, a trademark owner may choose to pursue a cybersquatting claim through both the TTAB and Federal Court, as the two proceedings are not mutually exclusive and can provide complementary remedies.

Looking For Trademark Assistance?

It is generally recommended to hire a trademark attorney to prosecute and defend trademark infringement claims before the Trademark Trial and Appeal Board (TTAB) or in Federal Court for several reasons:

  • Complex legal process: Trademark law is a complex area of law that requires a thorough understanding of the Lanham Act, the Trademark Manual of Examining Procedure (TMEP), and other relevant laws and regulations. A trademark attorney can guide you through the legal process and ensure that you comply with all of the requirements and deadlines.
  • Expertise in trademark law: Trademark attorneys have specialized expertise in trademark law, and can provide you with knowledgeable and experienced representation in your case. They are well-versed in the legal standards for trademark infringement, dilution, and false advertising, as well as the procedures for prosecuting and defending trademark claims.
  • Protection of your trademark rights: A trademark attorney can help you protect your trademark rights by advising you on the best strategies for protecting your trademark, and by advocating on your behalf in court or before the TTAB.
  • Maximize your chances of success: A trademark attorney can help you increase your chances of success in a trademark infringement case by providing you with a strong and persuasive legal argument, and by presenting evidence that supports your position.
  • Cost-effective solution: Hiring a trademark attorney can often be a cost-effective solution in the long run, as they can help you avoid costly mistakes and resolve your trademark dispute more efficiently. They can also help you minimize your legal fees by negotiating settlements or reaching alternative dispute resolution (ADR) agreements.

In short, if you are looking for trademark assistance, please contact us.  We can prosecute and defend trademark infringement claims before the TTAB or in Federal Court  and can provide you with the specialized knowledge and expertise you need to protect your trademark rights, and can increase your chances of success in your case.