What are the Penalties for Trademark Infringement?

The penalties for trademark infringement can vary depending on the specific circumstances of the case and the laws of the jurisdiction in which the case is being heard. Let’s first start with understanding what trademark infringement is: The Lanham Act defines trademark infringement as the unauthorized use of a trademark that is likely to cause confusion among consumers as to the origin of the goods or services being offered. This occurs when the infringing use of the trademark is similar enough to the original trademark such that consumers are likely to believe that the goods or services are produced, authorized, or sponsored by the owner of the original trademark. The Lanham Act provides a legal remedy for trademark owners who have suffered harm as a result of trademark infringement.

How Do I Know If Trademark Infringement Has Occurred?

To support a trademark infringement claim in federal or state court, the trademark owner must prove that it owns a valid mark, that it has trademark priority, and that other person or businesses’ trademark is likely to cause confusion in the minds of consumers with the goods or services offered in the marketplace. When a trademark owner holds a federal trademark registration on the Principal Register, there is a legal presumption of the validity and ownership of the trademark 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. These presumptions may be rebutted in the court proceedings.

Generally, the court will consider evidence addressing various factors to determine whether there is a likelihood of confusion among consumers. The key factors considered in most trademark infringement cases are the degree of similarity between the trademarks at issue and whether the parties’ goods and/or services are sufficiently related that consumers are likely to assume (mistakenly) that they 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.

Can The TTAB Resolve Trademark Infringement Issues?

The Trademark Trial and Appeal Board (TTAB) is a neutral body that functions like a court for trademark matters at the United States Patent and Trademark Office (USPTO). The Board’s administrative trademark judges are authorized to determine a trademark applicant’s right to register a trademark with the federal government. The Board is not authorized to determine whether a person or business has the right to use a trademark, and does not issue injunctions halting use. The Board only determines whether an applicant or registrant has the right to register a trademark or to retain a trademark registration under challenge (e.g., a trademark cancellation proceeding). Additionally, the Board is not authorized to determine questions of trademark infringement or unfair competition or to award money damages or attorney’s fees. For anything other than determining the right of federal registration, you must file a case in federal or state court.

While the Board is authorized to handle five different types of cases, there are three main categories of proceedings that the TTAB regularly handles: appeals, oppositions, and cancellations.

What Are The Common Penalties for Trademark Infringement?

Some common penalties for trademark infringement include:

  • Injunctions: A court may issue an injunction to prevent the infringing use of the trademark. This can require the infringing party to stop using the trademark, or to modify it to eliminate the likelihood of confusion.
  • Damages: The infringing party may be required to pay damages to the owner of the trademark for any harm caused by the infringing use. This can include monetary damages for lost profits, as well as damages for any dilution or tarnishing of the trademark.
  • Statutory damages: In some cases, the law provides for statutory damages, which are damages that are set by statute and do not require proof of actual damages.
  • Attorneys’ fees: In some cases, the infringing party may be required to pay the owner’s attorneys’ fees and costs associated with bringing the lawsuit.
  • Criminal penalties: In some cases, trademark infringement may be a criminal offense and can result in fines and even imprisonment, especially in cases involving counterfeit goods.

What Statutory Damages Can A Registered Trademark Owner Recover?

Lanham Act § 35(c), 15 USCA § 117(c), as added in 1996 and amended in 2008, provides for the election of statutory damages in a counterfeiting case.  To help stem an increasing wave of counterfeit activity, Congress in 1996 increased the penalties and facilitated procedures for the anti-counterfeiting battle.  The Lanham Act provides for statutory damages as an alternative to actual damages in civil counterfeiting litigation.  Similar to statutory damages in copyright law, a plaintiff is given the option to elect statutory damages when unable to prove actual damages. In 2008, Congress doubled the ranges the monetary penalty so that courts may award statutory damages in the range of $1,000 to $200,000 per counterfeit trademark per type of goods or services, and up to 2 million dollars if the violation is “willful.”

Looking for Trademark Assistance?

If you are a registered trademark owner seeking to enforce your trademark rights, we can assist. Our trademark attorneys have experience and knowledge of trademark law and procedures that can help increase the chances of a successful outcome. We can also provide legal advice and representation, navigate the complex rules and procedures involved in a trademark infringement cases, and negotiate on your behalf with a registered trademark owner.

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