A Look At Trademark Infringement In The U.S.
By Justin M. Jacobson, Esq.

Trademark law provides the exclusive right to use a mark to differentiate the goods or services of one person or business from those of another. A trademark commonly includes a word, phrase, logo, design or a combination of these, which are used in relation to goods and services.  Trademarks are used to designate the source of a good, and are used as an indicator of the quality of the goods.  The same is true for marks used in connection with services, typically referred to as “service marks”. 

 Trademarks can be valuable assets of a business, as the mark associated with the goods or services helps a business gain recognition and consumer loyalty; however, the owner must actively police any potential infringers. In particular, the Lanham Act permits the holder of a registered trademark to file a trademark infringement claim against anyone who makes the unauthorized use of an existing trademark (or service mark) or uses a mark in connection with goods (and/or services) in a manner that is likely to cause confusion, deception, or mistake about the source of the goods (and/or services).

Generally, if a trademark owner believes its mark is being infringed, they may file a lawsuit in either state or federal court for trademark infringement, depending on the circumstances of the particular case (15 U.S.C. § 1125).  The relevant inquiry in such cases are whether the targeted consumers are likely to be confused about the source of the goods (or services) sold in connection with the mark(s) in question.  A trademark owner can also bring an infringement case to prevent a third-party’s use of a registered mark that is identical or confusingly similar to the owner’s mark when used in connection with goods (or services) that are similar or related to those offered by the party bringing the suit. An owner can also bring a suit when the use of the mark falsely suggests an affiliation, connection or association with them.  In addition, a mark owner may also consider utilizing the Trademark Trial and Appeal Board (“TTAB”) to cancel someone else’s federal trademark registration through a Cancellation Proceeding.   In the TTAB, the sole remedy is the cancellation of the infringing mark without the ability to recover any related damages for the infringement.

There are several relevant factors involved in determining which causes of action to pursue against an infringed party.   Examination of the non-infringing party’s mark, including whether it was registered on the Principal or Supplemental Register, as well as how long the mark has been registered and used in commerce, are relevant inquiries.  For example, if a trademark is registered on the Principal Register and the mark has been used in commerce for the particular goods (or services) for more than five years and all necessary trademark renewals are filed; then, only certain grounds can be used as a basis to cancel an allegedly infringing registration. These include claiming that the mark has become generic and is therefore incapable of distinguishing one party’s goods(or services) from another; that the mark is functional as it is currently being used by the owner; or, that the mark has been abandoned by the owner,i.e., it is no longer in use.  Additional grounds could include that the registration was obtained by the owner through fraud or that the registered mark is “immoral, scandalous, or deceptive matter.”

In contrast, if a mark has not been registered on the Principal Register and has not been used in commerce for a minimum of five consecutive years, an owner may attempt to cancel an infringing mark based on a variety of causes of actions.  These include potentially filing a claim based on a likelihood of confusion between the registered mark and another’s mark.  Allegations could also include that the registered mark is merely descriptive of the goods (or services); that the registered mark is used in an ornamental way as applied to goods (or services) associated with the mark; or, that the registered mark dilutes the distinctiveness of a famous mark, which is explored in another article.  Finally, any trade mark registered on the Supplemental Register can be cancelled at any time, regardless of how long the mark has been registered.

A trademark owner wishing to pursue a trademark infringement claim in court must prove that it owns a valid mark, that the mark owner has priority to the alleged infringer (i.e.,the owner used the mark in commerce before the alleged infringer used theirs), and that the other party’s usage of the mark is likely to cause confusion in the minds of the relevant consuming public as to the source or sponsorship of the goods (or services) offered under the mark(s). Typically, a party with a valid federal trademark registration on the Principal Register is entitled to a legal presumption of the validity and ownership of the mark. However, this presumption can always be rebutted during the infringement proceedings.Generally,the court will consider evidence addressing various factors to determine whether there is a likelihood of confusion among the relevant consumers.  Many courts use the factors derived from the “Polaroid Case” (Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir.1961). These factors, sometimes known as the “Polaroid factors,” vary slightly as each federal court throughout the country applies them differently.  The below factors are intended as a guide, as not all factors may be helpful or applicable in every case; however, a Court typically looks at:

  • Strength of the senior user’s mark;
  • Similarity of the marks;
  • Similarity of the products or services;
  • Likelihood that the senior user will “bridge the gap;”
  • The junior user’s good faith intent in adopting the mark;
  • Evidence of any actual confusion;
  • Sophistication of the mark’s buyers; and,
  • Quality of the other user’s products or services.”

If a party has been found guilty of trademark infringement, there are several avenues of recovery available. Generally, the owner of a mark may obtain injunctive relief, the amount of damages suffered by the party, attorney’s fees, the costs of the action, and/or the costs of destruction of infringing articles.  A party may also attempt to obtain a declaratory judgment, which is a court ruling that the named defendant is infringing on the owner’s mark.  Injunctive relief in these matters can include obtaining a temporary restraining order followed by a preliminary injunction; and, then, a permanent injunction.

 In conclusion, if a party’s rights in their trademark are being infringed on, it is imperative that the party take immediate action to police and stop any known infringers. A failure on the part of a trademark owner could cause this party to be seen as acquiescing, abandoning, or otherwise permitting the other party’s use of the same or a similar mark.

 This article is not intended as legal advice,as an attorney specializing in the field should be consulted.                     

(c) 2018 The Jacobson Firm, P.C.


About the author

Justin M. Jacobson, Esq. - Vice-President, The Jacobson Firm, P.C. - Attorney Specializing in Entertainment, Sports, Esports, Fashion and Art Law. In particular, The Jacobson Firm, P.C. handles Trademarks, Copyrights, Contracts, Estate Planning, Music Business and Brand Development on behalf of creative talent and lifestyle brands.

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