Recognizing infringement of your mark and what to do about it!
By Rayan Felix Coutinho
Introduction
This is the last in the series of articles on trademarks. In this article, we will look at trademark infringement, how to recognize it, and how to enforce your rights. The general principles for recognizing infringement are the same regardless of whether the mark is registered or not and regardless of whether the registration is federal or state. Courts around the country use a standard called “likelihood of confusion” to determine whether one mark is infringing upon another mark. Basically, a trademark owner is permitted to enforce his or her trademark rights against any other person who is using the same or similar mark in a manner that is “likely to cause confusion” among consumers as to the source of origin of the mark. So, it is important to remember, that actual confusion is not required; it is only a factor in determining whether there is infringement.
Should I file the action in federal or state courts?
Generally, federal courts can hear the following types of cases involving trademarks: (1) actions alleging infringement of a federally registered trademark; (2) actions involving cancellation of a federally registered trademark; (3) actions involving unregistered trademarks; (4) actions involving state trademarks in which both parties are from different states and the amount in dispute exceeds $75,000.00; (5) actions in which the trademark issue is supplemental to another claim for which the federal court has jurisdiction. Generally, state courts can hear the following types of cases involving trademarks: (1) state trademark claims; (2) actions alleging infringement of a federally registered mark; and (3) actions involving unregistered trademarks.
Likelihood of confusion standard
As noted above, both state and federal courts apply the “likelihood of confusion” standard to determine whether there is infringement. Likelihood of confusion standard is satisfied if an appreciable number of ordinarily prudent purchasers are likely to be confused as to the source, sponsorship or affiliation of the defendant’s goods or services. Thus, it is not a merely possibility of confusion that matters; rather it must be a probability of confusion.
Factors used in determining likelihood of confusion
Federal and state courts have used different factors in determining whether a “likelihood of confusion” between two marks exists. It must be noted that no single factor is dispositive and depending on the facts and circumstances in a particular case, a court may assign different weights to each of the factors.
1. Similarity of the marks;
2. Similarity of the products and services;
3. Strength of the marks;
4. Marketing environment;
5. Consumer sophistication and care;
6. Presence of actual confusion;
7. Geographic use by the parties;
8. Likelihood of bridging the gap;
9. Consumer surveys;
10. Consumer testimony;
11. Dealer testimony;
12. Harm to reputation;
13. Presence of bad faith on part of the alleged infringer;
14. Any other factor a court may deem fit.
Defenses
Obviously, the existence of a license, whether exclusive or nonexclusive, creates an affirmative defense to a claim for trademark infringement. The failure of the trademark owner to bring the action in court within the application statute of limitations is also an affirmative defense. Another strong defense is acquiescence. Acquiescence is generally found if: (1) the owner actively represented that it would not assert a right or claim; (2) delay between the owner’s representation and assertion of the right or claim is not excusable; and (3) the delay caused the alleged infringer undue prejudice. A similar defense is laches which is usually a little harder to prove. The laches defense applies when there has been a sufficient passage of time between the trademark owner’s knowledge of the infringement and the date when the owner brings the suit. As with acquiescence, prejudice to the defendant is also required. Other defenses that may be asserted by a defendant are: (1) unclean hands; (2) fraud in the procurement of registration or maintenance of the trademark by its owner; (3) state immunity; (4) preemption of state laws by federal law; (5) fair use by the alleged infringer; (6) first sale rule; (7) other statutory defenses; and (8) first amendment.
Remedies
Depending on whether the mark is registered or not registered federally and depending on the nature of defendant’s conduct i.e. whether it was willful infringement, a court may fashion one or a combination of the following types of remedies in an infringement action: (a) ex parte seizure of infringing goods; (b) injunctive relief; (c) defendant’s profits; (d) actual damages; (e) prejudgment interest; (f) corrective advertising; (g) monetary relief in counterfeiting cases; (h) punitive damages; (i) attorney fees; (j) court costs; (k) destruction of infringing goods; (l) judicial cancellation of a mark; (m) criminal penalties for trademark counterfeiting.
admin @ April 2, 2007