Remedies for trademark infringement ensure that the owner of a trademark is properly compensated for any damages a defendant has caused by infringing on protected material. The monetary awards for an infringement typically cover actual damages, but they may also include lost profits because of the infringement and any profits that the defendant made by using the mark. Highlighted below are more details about trademark rights and laws, what constitutes infringement, and the punishments that are in place for infringing activity.

What Is a Trademark?

A trademark identifies and distinguishes an individual or company's goods or services from all others. Trademarked content may include a brand name, logo, jingle, or other distinguishing material. This mark helps customers know that a particular product or service is affiliated with a certain company or person. A trademark also:

  • Clarifies the origin of a product.
  • Indicates that the product's quality hasn't changed.
  • Distinguishes the trademarked item from others.

A trademark is helpful in securing some protections, but it's not the same thing as a copyright, patent, or geographic indication. Copyrights apply to artistic or literary works and grant the authors of that content exclusive rights, such as the right to publicly perform a specific work. A patent protects an invention, and a geographical indication specifies that a good or service came from a certain territory.

The owner of a trademark has exclusive rights to the marked goods or services, but only in the country where the mark is registered. It's also not mandatory to register a mark in certain countries. However, doing so clarifies who has official rights to a marked item and can help with any future litigation.

Before applying to register a trademark, an individual or business should search through the records of already registered trademarks. This can help the rights holder confirm that there are no similar or exact marks already in use.

What Is Trademark Infringement?

Trademark infringement occurs when another person or business violates the mark holder's exclusive rights to use the registered material.

Infringement may occur when a person uses an identical or similar mark as the already registered trademark that another person owns. However, there are some exceptions as to what counts as infringement:

  • To count as infringement, the products or services must also be identical or similar to those registered under the trademark.
  • In some countries, a person can't infringe on a trademark that isn't registered. Thus, the owner of an unregistered mark can't act against infringement.
  • In countries that follow common law rights, such as the U.S., the person who first used a brand name or other protected content may act against a person or business who has infringed on those protected materials.

One of the most common types of trademark infringement is when a person uses a symbol or a design that it is too similar to protected material. To prove infringement, the owner of the trademark only needs to show that the infringing material is identical or deceptively similar. This is the only proof required.

Costs That Can Be Recovered for Trademark Infringement

The owner of a trademark can take legal action to stop the infringing activity. However, the rights holder may also be entitled to compensation related to lost profits, attorneys' fees, and other losses due to the infringement. These rights apply to registered trademarks and those protected under common law.

The court may also order that the infringing party make reparations for any damage made to the owner's business reputation. These types of damages are measured by things such as an infringing party having sold low-quality goods under the protected mark.

Trademark violations may also occur internally inside a corporation. Dual liability provision laws address instances where an employee of a corporation violated that corporation's trademark rights.

A trademark attorney can help you recover all costs related to the infringement, such as demanding restitution for unjust enrichment.

Monetary Relief for Infringing Activity

Under the Lanham Act, the holder of a mark may receive monetary awards for actual damages and lost profits due to the infringement. Moreover, the mark holder may also be compensated to account for any profits that the infringer made using the mark. If the infringer stole material deliberately, courts will increase rewards for damages by 300 percent.

Note that a person or business can't recover punitive damages at the federal level. However, state unfair competition laws may provide compensation for these types of damages.

Steps to Trademark Application

Before applying for registration, it's important to look at which trademarks have already been registered. This is to make sure your registration won't be denied because it is too similar to the proposed mark of a prohibited or current one. The application is looked at to make sure it's unique and doesn't interfere with a pending trademark or current registered trademark. If no opposition is found, or if the applicant is found in favor of the trademark despite the opposition, the mark gets registered and the applicant gets issued a certificate of registration.

What Is the Common Ground for Trademark Application Refusal?

A trademark will likely be refused if there's a chance of confusion with a prior mark that's pending or a registered mark. Marks are descriptively related to the applicant's services or goods, or the feature of the services or goods. They can also be refused registration. Marks that have surnames or geographic terms might also be refused. These are some reasons marks can be refused, but it's not limited to this list.

What Is the Term of a Trademark Registration?

If the trademark gets renewed, you can extend the period for an additional 10 years. Different from patents, industrial design trademark rights or copyrights can last forever if the owner decides to keep using the mark. That said, if a registered trademark isn't renewed, it's liable to be taken out from the register. Anyone who states that they have rights in the mark can use the TM (or trademark) or SM (or service mark) symbol to let the public know of their claim.

What Is Included in the Damages Calculation Provision 1?

If there's a case where the trademark owner uses their individual registered trademark or if the counterfeits are assigned by the infringer, the total damages the owner suffers can be found by multiplying the amount of counterfeits the infringer assigned by the number of profit for each unit of assets which the owner might have sold. This can't exceed the number related to the owner's ability to exercise their rights.

If the situation should've stopped the trademark owner from selling part or all of the assigned number of goods, the total damages can be calculated by subtracting the amount related to those said numbers. A sum of damages that's tentative gets calculated under the provision. It's expected that the infringer will demonstrate and argue for the decreasing elements. This includes infringers' sales that are mainly due to the infringer's efforts.

It can also include if the price or quality of the counterfeit items differs from what the trademark owner is selling. This also applies if an individual trademark besides the one that's similar to the counterfeits was used and the consumer bought the counterfeits due to them being the goods of the infringer.

Trademark infringement cases are different than patent infringement cases. This is because according to Trademark Law Article 38, Paragraph 1, trademark owners must demonstrate and argue for a relationship's existence, such as a relationship that's complementary. This must be between true goods and counterfeit sales as you can't assume that the real goods for the trademark would end up being sold, even if no counterfeit items were sold.

The owner of the trademark also needs to show that if the consumers didn't buy the counterfeits, they would have ended up buying the goods from the trademark owner. To find the sum of damages, calculate the number of assignments from the infringer by the profit per unit of the copyright holder. The calculated amount can't go over the amount related to the trademark owner's option to apply their trademark right.

If the trademark owner applies their right to the infringer and the registered trademark still makes a profit off their infringement of the trademark, the total of the infringer's profits will be equal to the damages the trademark owner suffered. Again, the trademark owner needs to show and argue for the existence of the identical relationship where consumers would have bought the trademark owner's goods if they hadn't bought the counterfeit goods.

For example, if the infringer profited by making 10,000,000 yen by putting an identical trademark on their goods, the owner of the trademark can be assumed to have experienced damages of 10,000,000 yen. However, if the relationship is tenuous, the total cost of damages can be decreased.

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