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Trademark Infringement: Laws and Penalties

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  • 0:05 Trademarks
  • 2:23 Trademark Infringement
  • 5:52 Trademark Confusion
  • 8:28 Remedies
  • 9:23 Lesson Summary
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Lesson Transcript
Instructor: Ashley Dugger

Ashley is an attorney. She has taught and written various introductory law courses.

Trademark infringement occurs when someone uses another's trademark without permission from that trademark's owner. There are various state and federal laws that protect trademarks. This lesson explains trademark infringement and the laws that cover trademark infringement.

Trademarks

Welcome to Barks and Bubbles! I use a particular logo for my pet-grooming business. It's something I designed myself and is unique to my business. My clients recognize my business and my pet products through my use of this exclusive logo. I use my logo as a trademark.

A trademark is any word, letter, name, design, or symbol that is used to identify a particular business, particular goods, or particular services. A business can claim a trademark simply by using the logo, or the mark. This is known as an unregistered trademark and is symbolized with the 'TM' designation. Sometimes, a trademark is used only to identify services. This type of trademark is known as a service mark. A service mark is symbolized with the 'SM' designation.

Because my logo is distinctive to my business, and I want to protect its use, I went to the trouble to hire an attorney and register my logo. This is known as a registered trademark. A registered mark is symbolized with the 'circle R' designation. Trademarks are registered through the United States Patent and Trademark Office, or the USPTO. Before a trademark can be registered, a party must formally apply for registration. This application process includes a trademark search through the USPTO database. The search must confirm that no one else has registered the same, or strikingly similar, trademark.

There's no requirement that a trademark be registered, though registration affords more protection for the trademark. A business with a registered trademark has the exclusive right to use that mark for 20 years and can sue a party for the unauthorized use of that mark. This is why I registered my trademark with the USPTO and with my state trademark office when I first started using the logo. I've used my registered trademark for two years now on all of my signs, in all of my advertisement pieces, and on all of my pet products.

Trademark Infringement

So, you can imagine my surprise when I learned that a new pet-grooming business is opening right next door to mine. This business put up a new sign, and the sign uses a very similar pink logo to mine. The new business is called Wash and Woof. I'm afraid I might lose clients to this new business, and I'm concerned that people might confuse my business identity with that of the new business. I immediately contact my attorney because I think I might have a trademark infringement cause of action.

Trademark infringement is a civil cause of action. It's the violation of rights held by a trademark without authorization from the owner or licensee of that trademark. Trademark infringement laws vary from state to state. I need to find out what elements my state requires for this type of claim.

My business is in a small town in Florida. Like most states, Florida has a trademark statute that will allow me to recover damages and lost profits if I can show that the new business knowingly used a reproduction of my registered trademark, and that use is likely to cause confusion or mistake. This means that I won't have to prove that Wash and Woof used my identical logo. I'll just have to show that their logo is similar enough to mine that there is a strong enough likelihood of confusion. This Florida statute is similar to those found in most other states.

My attorney explains that I might also have a federal cause of action because there are federal laws that protect my trademark, too. State laws used to provide the most protection for trademarks, but Congress changed that with the Lanham Act. This act is a well-known set of federal statutes geared toward protecting trademark rights. The Lanham Act was enacted in 1946 and has since been amended and expanded many times. As a result, federal law generally provides the most extensive protection for both registered and unregistered marks. To prove federal trademark infringement using the Lanham Act, I'll have to prove that:

  • I have a valid and legally protected mark
  • I own the mark
  • Wash and Woof's use of the mark to identify goods or services causes a likelihood of confusion

These criteria were established through the famous 2000 federal case of A&H Sportswear Co. v. Victoria's Secret Stores, Inc. A&H uses a trademark to identify its MIRACLESUIT swimsuits. Victoria's Secret uses a trademark to identify THE MIRACLE BRA, which it uses for lingerie and also swimsuits. A&H filed a lawsuit for trademark infringement, claiming that the use of THE MIRACLE BRA to identify swimsuits would likely confuse consumers wishing to purchase MIRACLESUIT swimsuits. The federal court ruled that use of THE MIRACLE BRA didn't create direct confusion with the MIRACLESUIT, but was similar enough to warrant a disclaimer stating that Victoria's Secret swimsuits weren't affiliated with MIRACLESUIT. This disclaimer would appear anywhere that THE MIRACLE BRA was used to identify Victoria's Secret swimwear.

Trademark Confusion

Confusion is an important element in any trademark infringement case and difficult to prove. To show confusion, the trademark owner must prove that customers are likely to mistake the trademark owning business for the infringing business. To help clarify this element, some courts consider certain standards when determining whether trademark infringement has occurred. The Ninth Circuit Court of Appeals, which includes California, established this widely used set of standards in 1979:

  • The strength, or length of use, of the mark
  • The proximity of the two businesses or goods
  • The similarity to the protected mark
  • Any evidence of real consumer confusion
  • The marketing channels used by each business
  • The types of goods and how much care a consumer is likely to take in selecting the goods
  • The intent of the infringing party
  • The likelihood that the product lines or businesses will be expanded

My business is relatively small, and I have only one storefront. I'll likely have to prove confusion and trademark infringement using evidence that fits these standards or standards very similar to this.

Let's take a look at the likelihood of confusion. Wash and Woof is also a pet-grooming business, so it directly competes with my established business. The two stores are physically located right next to each other and will likely market to the same customer base using the same marketing channels and methods. I don't know if Wash and Woof purposely copied my logo, and I don't yet know if my customers will actually be confused. But, if the court finds that their logo is sufficiently similar to mine, the court will likely find trademark infringement based on these elements.

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