What Is Trademark Infringement?

Trademark infringement is the unauthorized and illegal use of a trademark or service mark when such use could lead to confusion between the original trademark and a mark that is used later. A trademark is a word, phrase, symbol, slogan, color, packaging, or any other "mark" that identifies specific goods or services. The Lanham Act covers trademark law.

In order for the use of a mark to be counted as trademark infringement, a few things must be true:

  • The mark must be valid and eligible for legal protection.
  • The person who claims that infringement has happened must own the mark.
  • The unauthorized use of the mark must be connected with the sale or advertising of services or goods. It must be used in commerce.

Trademark infringement can happen in connection with both registered and unregistered trademarks.

The Confusion Factor

To amount to infringement, the unauthorized use of the trademark must be likely to cause confusion.  Although the exact procedure may vary from state to state, some things that courts consider when they are deciding if use of a trademark could lead to confusion include:

  • How similar the marks are. They do not have to be identical.
  • How similar the goods and services are of the two parties who used the mark. Note that if the goods being considered are patented, the patent classes may have nothing to do with whether the goods in the trademark case are related.
  • The strength of the plaintiff's mark. How widely recognized is the original mark? How strongly is it tied to the trademark holder's goods or services?
  • Evidence that the defendant's use of the mark caused confusion.
  • The defendant's intentions.
  • The physical locations of the two businesses.
  • How careful shoppers might be when considering the two businesses.
  • Whether the market for the trademarked goods is likely to expand.

The first two above-listed factors carry the most weight in court cases. The last three are only considered in some circumstances.

There are no hard and fast rules that determine what usage of a mark amounts to infringement; these cases often rely heavily on the opinions of those involved.

Why Is Trademark Infringement Important?

According to some experts, the average cost of a trademark lawsuit can be between $120,000 and $750,000. Sometimes, these cases can last for years. Therefore, understanding what trademark infringement is can save you both time and money.

Consider the 2016 case of Estate of Marilyn Monroe v. Fashion Central as an example that illustrates the importance of trademark infringement. The Estate of Marilyn Monroe owns numerous trademarks related to the famous actress and fashion icon, and four of those trademarks have been labeled as incontestable. This means that almost all challenges to a trademark will fail.

Fashion Central began to package some of its goods using the image of Monroe without a license. However, they never used Monroe's name. The estate sent a cease and desist letter to Fashion Central, but this letter was ignored.

This legal entanglement could cost both Fashion Central and the Estate of Marilyn Monroe much money and time.

How to Avoid Trademark Infringement

To avoid infringing on someone else's trademark, you should become familiar with the ins and outs of what amounts to infringement.

Intent is one of the key things you should consider. A lawsuit that began in 2010 between GoDaddy and the Academy Awards illustrates this point. The Academy Awards filed the lawsuit because GoDaddy had allowed customers to buy names like "2011Oscars.com." The claim was that GoDaddy profited from the Academy Awards.

The court ruled in favor of GoDaddy because there had been no "bad faith intent to profit" from the sales of the internet domain names. GoDaddy's intentions played an important role in the case.

Studying past cases can give you further insight into what may be considered trademark infringement. Some other cases you might look at include:

  • 3M v. 3N
  • D2 Holdings v. House of Cards
  • Louis Vuitton v. Louis Vuiton Dak
  • Adidas v. Forever21
  • Segway v. Swagway and Razor
  • American Eagle v. Pantaloons
  • Lucky 13 v. Taylor Swift
  • Starbucks v. Freddocino

If you ever become concerned that your use of a mark might considered infringement, talk to an attorney. A lawyer with experience in intellectual property can help you search for the trademark and find out who else might be using something similar. This won't guarantee that you'll never be sued for infringement, but it will lessen the likelihood.

Sometimes, despite your best intentions, you could be faced with accusations of trademark infringement. Consider carefully whether you want to pursue the issue. Sometimes it's easier to rebrand your business with a new mark.

Keeping Your Trademark Secure

In infringement cases, the law tends to favor trademarks registered with the United States Patent and Trademark Office (USPTO). To learn how to register your trademark, take a look at this guide from UpCounsel.

Also, if you become aware that someone else is using your trademark, act quickly. If you delay, this can hurt your ability to enforce your trademark, especially if your trademark is unregistered.

Begin defending your trademark by sending a cease and desist letter. If the party who receives the letter doesn't obey, you may have to talk to an attorney about filing a lawsuit.

Be Sure to Consider Dilution

Think about whether your using a certain mark could lead to dilution. Dilution happens when the public begins to associate a famous mark with more than one good or service, even if those goods and services aren't closely related to each other.

There are two types of dilution:

  • Blurring is when the use of a mark by someone other than its owner makes the mark less unique.
  • Tarnishment is when the use of a famous mark could ruin the positive reputation of the mark's owner.

You can't be accused of dilution if your use of a mark is non-commercial or if you are using it in a fair use manner.

Frequently Asked Questions

  • How much does one have to change an existing logo to avoid trademark infringement?

There is no direct way to answer this question because infringement cases are so subjective. You must consider several things, including whether you operate in a similar line of business as the holder of the original trademark. Remember, if your use of a certain mark is likely to cause confusion, you should not use it

Copyrights are another thing for you to think about. Copyright covers expressions rather than marks that identify goods and services. Expressions are the way an artistic idea is expressed. Copyright law doesn't cover typography, so if your logo only has words, you won't be in danger of infringing on a copyright.

  • How do we analyze the similarity (or dissimilarity) of marks? 

A court considers the appearance of the marks, their meaning, their pronunciation, and how the public receives the marks.

  • What defenses are available if you are accused of trademark infringement?

You may claim that your use of the trademark fell under the fair use umbrella. Fair use allows you to make limited use of another's trademark for such purposes as news reporting, teaching, and criticizing.

You might also be able to say your use of the trademark was collateral. Collateral use is when you use a trademarked item as part of a larger invention; when this happens, you can call the trademarked part by its proper name.

  • What can you expect to receive if your trademark was infringed upon and you win the infringement case?

Whether the court proceedings happen in federal or state court, you might receive money for damages as well as compensation for profits that the infringer made when they were using your trademark. The infringer will be ordered to stop using your trademark. It is also possible you will be compensated for your attorney fees.

Conclusion

Whether you want to protect your trademark or you're concerned your use of a mark might be infringement, you can benefit by studying the details of what trademark infringement is.

If you need further help on trademark infringement, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.