What Is Trademark Infringement?

No one likes to have their property stolen, and trademarks, like copyrights and patents, are property. If these types of property are stolen (used without permission), that’s called infringement, and trademarks are protected against infringement under U.S. law.   

Definition and Examples of Trademark Infringement

A trademark is a word, symbol, or phrase that a business uses to distinguish its products from those of other businesses. A service mark works the same way for business services. Trademarks are protected by intellectual property laws. 

Trademark infringement is the unauthorized use of someone else’s trademark without permission, and in a way that can cause confusion, deception, or a mistake about ownership of goods or services. 

Alternate name: trademark violation

To support a claim of trademark infringement, the owner must prove several claims to the court: 

• It must prove it owns the trademark. 
• It also must prove it has priority, meaning being the first to use it.
• It must be able to show that the defendant’s mark is likely to cause consumers to be confused about the source. 

The courts also look at:

• The strength of the mark.
  
• The proximity of the goods (i.e. tennis apparel and tennis shoes are close in proximity, while tennis shoes and cleaning products are not).
• The similarity of the marks (including any graphics).
• Evidence of actual confusion.
• The similarity of marketing channels used (advertised on the same cable channel, for example).
• The degree of caution exercised by the typical purchaser.
• The defendant’s intent.

Examples of Trademark Infringement Lawsuits 

In these cases, the “confusion” issue was the reason for the lawsuit:

• Adidas America sued retailer Forever 21 because the graphic on the latter’s apparel was too close to the former’s familiar stripe design; the two companies reached a settlement agreement in 2017. 
  
• 3M Co. won a lawsuit against a Chinese company that used the trademark “3N.” 
• The World Wildlife Fund (WWF) won a lawsuit against the World Wrestling Federation (WWF) in 2001, forcing the wrestling group to become World Wrestling Entertainment (WWE). 

How Trademark Infringement Works

A trademark owner that believes a trademark it owns has been infringed on may start a civil case against the allegedly infringing party. Most trademark owners file their lawsuits in federal court. They can also use state common law, but only for cases within the state where the trademark is registered. 

Another option to challenge a trademark violation is for the trademark owner (through its attorney) to send a demand letter (sometimes called a cease- and- desist order) to the other party in an effort to resolve the situation without going to court.

Defenses to Claims of Trademark Infringement 

Some common defenses against the claim of copyright infringement are:

• The trademark’s registration was fraudulent.
  
• The mark has been abandoned by the registrant.
  
• Use of the mark misrepresents the source of the goods or services.
  
• The use is the person’s individual name or is descriptive, with no secondary meaning.
  
• The defendant was using the mark before the date the mark was registered, and didn’t know the plaintiff was also using it.
  
• Fair use, using the words in good faith, purely descriptive, and not in the secondary meaning of the term.
  
• Parody,  the deliberately exaggerated imitation of a style for comic effect.

Penalties for Trademark Infringement

The penalties for the defendant are remedies for the plaintiff. Common remedies in the form of monetary relief include:

• The defendant’s profits.
• Damages sustained by the plaintiff.
• Costs of the action (attorney fees and court costs).

Protecting a Trademark  

The best way to protect a trademark against infringement is to:

• Use it in business dealings with others and especially with the public.
  
• Register the trademark.

Trademarks can be registered with: 

• The USPTO.
• A U.S. state agency.
• The Madrid Protocol, in order to register and protect trademarks in foreign countries.

Avoiding a Trademark Infringement Claim

The best way to avoid having someone claim infringement is to do research before the trademark is used. Check official records to make sure no one has a similar trademark. Some places to search include:

• The USPTO’s Trademark Electronic Search System (TESS). 
• State business name registrations in the states where you do business.
  
• The World International Property Organization’s Global Brand Database if you do business internationally.

Getting Help With Trademark Infringement 

Whether you are the plaintiff or defendant, it’s a good idea to get help from a U.S.-licensed trademark attorney. An attorney can help you craft documents, navigate negotiations, and save you from additional costly legal problems.