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Trademark Infringement Lawyer

Trademarks are valuable to businesses and their profitability. These marks differentiate your business from your competitors and help customers identify you from a sea of other companies. But in the age of the internet, trademarks are at a higher risk of being misused. The good news is that the Lanham Act, the federal statute that governs law around trademarks, has provisions that empower you to report and bring such misuse to court and hold the party at fault accountable. The best way to go about the procedure is to hire a trademark infringement attorney who is aware of the intricacies of the legal processes and can guide you through them. To help you get a grasp of the subject, we have compiled the basics of the laws and processes around trademark infringement.

What Is Trademark Infringement?

The definition of trademark infringement is the unauthorized use of a logo, phrase, or name for a product or service in a way that is likely to cause confusion about the source of the product in the consumers’ minds. When you register a trademark, it gives you exclusive rights to use the mark, logo, or phrase for commercial purposes. The same registration also gives you the right to sue any individual or organization who uses the trademark without your consent. For making a strong claim and demanding action against the infringer, you need to fulfill certain legal parameters. Checking these parameters will help you proving your claim and getting the legal authorities to take the strongest of coercive actions against the infringer.

Legal Requirements to Establish a Trademark Infringement Claim

The basic legal requirements that you need to fulfill to pursue a trademark infringement lawsuit are as follows:

  1. You need to show that you have a valid trademark that is entitled to legal protection
  2. You need to prove that you exclusively own the mark
  3. You need to prove that the infringer’s use of the mark created or could have created confusion in the customers’ minds and impacted your business and profitability

Let’s discuss and understand the three elements that form the basis of a trademark infringement lawsuit in detail:

Use

The first and the most basic element that is of utmost importance is to prove that the trademark was used. Several activities can cause confusion among consumers or can be labeled as a commercial activity. But without proof that the trademark or a similar-looking mark was used, these activities to not violate the Lanham Act and cannot be termed as trademark infringement. This element serves as a restricting factor that prevents trademark holders from monopolizing generalized terms and language. Therefore, if you find your competitor using your technique to promote their products without using your mark, it cannot be termed as trademark infringement.

In Commerce

Proving the trademark was used for commercial purposes is a statutory requirement that needs to be met when pursuing a trademark infringement claim. The statutory requirement is included under the Lanham Act and is derived out of the congressional power of regulating interstate commerce. To meet this requirement, you must provide evidence that can prove that the alleged infringement activities have a significant impact on your interstate commerce. The interstate commerce activities that classify as infringing are:

  • Publishing of advertisements bearing the trademark in more than one state by the alleged infringers
  • Movement of products bearing the trademark from one state to another and their sale in the destination state
  • Attempts to registering a trademark by sending products bearing the mark from one state to another
  • Publication of advertisements in newspapers that have interstate distribution or on billboards near or on the interstate highways. Similarly, broadcasting advertisements that use the trademarked phrase or name over television and radio channels that have interstate ranges

Likelihood of Confusion

This element carries the most weightage in a trademark infringement claim and decides the direction in which the decision will swing. A likelihood of confusion is established when you prove that the consumers are likely to associate the product or service using the infringed mark with a different brand/source. The court uses two different standards for determining the likelihood of confusion depending upon whether the infringed items directly compete or have no direct competition with the trademarked product or service.

  • When the item in question directly competes with the trademarked item then the court’s rulings depend on the similarity of the two marks in question. If the court finds that there is a stark similarity between the two marks that is likely to create confusion among consumers then it will simply rule the decision in your favor.
  • When the items using the trademark fall under a completely different category of goods and services provided then the court is likely to rule the decision against you stating the likelihood of confusion is unlikely

However, some cases can be more complex than the two aforementioned standards. It is possible that the products and services in question are related but do not directly compete for profits and business. In such cases, determining the likelihood of confusion and its impact on business becomes complex. For such situations, the court uses a standardized test known as the Lapp Test which uses a non-exhaustive list of factors to help the justice system determine the likelihood of confusion in such cases. Some common factors that are most commonly used are:

  • The strength of the owner’s mark that has been trademarked
  • The percentage or level of similarity between the infringed mark and the owner’s mark
  • Proof that there was actual consumer confusion
  • Marketing channels used to advertise and promote the products and services bearing the infringed mark
  • The alleged infringer’s intent behind using the mark
  • The nature of goods and services involved and the consumer’s likely degree of care exercised while buying the products
  • Factors suggesting that the consumers expect the trademark owner to foray or expand into the infringer’s market

Remedies Against Trademark Infringement

Now that you have an idea of how strong your trademark infringement claim is, let’s discuss the legal remedies that you can demand. There are numerous legal remedies that you can demand from the infringer but some of the most common and effective ones are:

Monetary Compensation

The Lanham Act lays down five types of monetary compensation that you can demand:

  1. Actual Damages: These damages are awarded after determining the extent of impact the infringement has caused on your business and profitability. These damages are hard to evaluate and prove in court as you will require to provide strong proof showing that the infringement caused a decline in sales of your goods and benefitted the infringer.
  2. Profits from Sales of Infringed Goods: In this type of monetary compensation, the court takes away the gains that the infringer has generated using your mark and awards it to you. Like actual damages, you will be required to prove the compensation you demand using strong proof.
  3. Reasonable Royalty: This is an alternative to actual damages. The method measures compensation by calculating the reasonable value the infringer should have paid for a trademark license.
  4. Attorney Fees: The Lanham Act states that the prevailing party should be awarded attorney fees in exceptional cases. Exceptional cases are defined as the lawsuits where the losing party was responsible for some form of wrongdoing during the proceedings or had a stance that was oppressive.
  5. Statutory Damages: You may choose to receive statutory damages over actual damages. The ranges for statutory damages have been defined in the constitution. These damages are awarded based on the use of counterfeit marks for sale, distribution of goods, and for the advertisement of products or services for sale. Statutory damages are awarded per infringement and do not require you to provide extensive proof. The damages awarded range from $1000 to $200,000 for non-willful infringements and can go up to $2 million for willful infringements.

Injunction

You can request the court to prohibit the infringer from selling products or advertising services using the trademark. The court-ordered injunction can order the infringer to cease all activities instantly or cease sales after the end of a reasonable sell-off period. The nature of the injunction can vary based on your case and the outcome of your hearing.

Forfeiture or Destruction of Infringed Goods

You can demand the court to order the destruction or forfeiture of infringed goods in circulation. In such cases, the court gives the infringer a particular time frame to destroy or forfeit the infringed goods.

Why Hire a Trademark Infringement Attorney?

As you may have already realized, taking on the responsibility of making a trademark infringement claim in your own hands is not a good idea. Hiring a trademark attorney is the best way to recover the damages that you incur. Here is how a trademark infringement attorney will help you:

  • Trademark lawyers understand the legal trademark landscape and are aware of the intricacies involved in the process. A trademark infringement attorney will present the case keeping your best interests in mind and will help you get the best possible outcome.
  • Collecting and presenting evidence is vital to proving infringement and misuse of a trademark. An expert trademark infringement lawyer knows how to collect and present evidence to build a strong claim and will help you strengthen your position in court
  • With a trademark attorney by your side, you equip yourself to evaluate the full extent of the damages you incur and demand the compensation that you rightfully deserve
  • There are different ways infringement can occur. A trademark infringement attorney is well aware of the smallest of ways your credibility can be used by a third-party. An expert legal professional will help you track these infringements and put a stop to all these activities.

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