Do you want your brand to be as iconic as Tiffany blue or the “chung-chung” of Law and Order? Or how about Apple’s ever-evolving apple? Or maybe you’d settle for something as durable as Underwood’s Deviled Ham—one of the oldest trademarks still in use today.
We don’t blame you. A lasting and recognizable brand means you’ve established your business in a competitive marketplace. But the road to brand recognition is a long one without a well-protected trademark.
Knowing what constitutes trademark infringement—and what to do about it—is key to protecting your business, your brand, and your intellectual property.
What is trademark infringement?
Trademark infringement occurs when a person or business uses a trademark without the owner’s permission in a way that causes confusion, deception, or misunderstanding about the source of the goods or services.
For example, a brand might unknowingly use a confusingly similar mark for the same product in a different location. Or an unethical company could intentionally copy an already-famous trademark in an effort to gain credibility among consumers. In either circumstance, the company that rightfully owns the trademarked material in question could end up losing business due to uncertainty or downright deceit.
What does a registered trademark protect?
A trademark protects a brand name, slogan, logo, or branded imagery, which the owner is given exclusive rights to use in commerce. If you have a registered trademark, your business is the only one authorized to use that mark to promote any goods or services listed in the registration.
Other businesses are not permitted to use a similar mark in any manner that could mislead customers. And if they do? You’re empowered to take legal action against any company or individual whom you believe is using your intellectual property without your permission. (Note, however, that your trademark protection is only valid in the specific industry or location for which it’s registered.)
The building blocks of a trademark infringement case
To prove trademark infringement in Texas, your trademark attorney must be able to demonstrate that three distinct elements are present in the other party’s use of your mark:
- Use of the trademark
- Being in commerce
- The likelihood of confusion
Without proving that all three of these factors are in play, your trademark dilution or trademark infringement case could fall flat. You’ll want to take a close look at each one.
You must prove that the alleged infringer is using the trademark in the first place. Specifically, the mark may appear on goods, packaging, or advertisements.
For unauthorized use of your mark to count as trademark infringement, it must appear “in commerce.” In other words, the use of your mark is only trademark infringement if the mark is being used in connection with the sale or transportation of goods or services. (This may also include the advertising or marketing of goods and services.)
Likelihood of confusion
The final, and most important element, is the likelihood of confusion. “Likelihood of confusion” means that the use of the mark by the alleged infringer could confuse potential consumers about the source of the goods or services in question.
To determine the likelihood of confusion, the court will consider various factors, such as the similarity of the marks, the strength and uniqueness of your mark, and the similarity of each brand’s goods or services.
Legal recourse in a trademark infringement case
If you believe someone is infringing on your trademark, contact a trademark attorney right away. You have options to protect your rights, your intellectual property, and your business.
The first line of defense is often to send a cease-and-desist letter. Some alleged infringers may be willing to back down as a result of this simple, cost-effective measure.
If a cease-and-desist letter or “takedown request” doesn’t work, you may have the option of seeking mediation or arbitration. But in some cases, it may be necessary to file a lawsuit for trademark infringement. If your case is successful, the court may order the other party to stop using your trademark and pay you damages for the offense.
Avoiding trademark infringement
Believe it or not, business owners generally don’t want to infringe on someone else’s mark and rarely do so on purpose. But when it does happen, it can be disruptive and stressful. So whether it’s in the interest of protecting your own mark or avoiding infringement of someone else’s, it’s important to be proactive.
We recommend selecting a mark that is highly unique to reduce the likelihood of mix-ups in the future. The strongest trademarks are fanciful, arbitrary, and suggestive. In the event that someone attempts to infringe on your rights, it may be easier to prove your case in court.
At Shann M. Chaudhry, Attorney at Law, PLLC, we help our business law and trademark clients conduct a thorough search of existing trademarks before establishing a new trademark. Not only does this search help to prevent unintentional trademark infringement, but it can also save you from costly legal issues and the need to rebrand down the road.
Once your new mark is registered, it’s important to monitor it on an ongoing basis. An experienced trademark attorney can help you scan for infringers and take appropriate action to protect your mark when necessary.
What is the difference between trademark infringement and trademark dilution?
Trademark infringement and trademark dilution are two different legal concepts.
Trademark infringement occurs when someone uses a mark that is confusingly similar to a registered mark. For example, let’s say you design cowboy boots under a particular name and another designer uses a very similar name to sell their own cowboy boots a couple of hours away. Customers may become confused and believe that both designers are owned and operated by the same brand.
Trademark dilution occurs when someone uses a famous mark in an unauthorized way that reduces its distinctiveness from other brands. One example of this would be to put a technology company’s logo on food products. (Say, putting Apple’s logo on Mott’s applesauce.)
In Texas, you have a legal right to protect your brand by filing a suit in either scenario.
Questions about trademark infringement? Speak with an experienced Texas trademark attorney
If you’d like to learn more about trademark infringement and trademark rights, please contact us. At the law firm of Shann M. Chaudhry, Attorney at Law, Esq., PLLC, we’re passionate about protecting your intellectual property rights.
Whether you need help navigating the legal process to file for a trademark, want to protect your mark from dilution, or have been accused of trademark infringement yourself—we’re here to help. Contact us for an affordable consultation today.