Generally speaking, trademark infringement deals with a person or business attempting to sell or selling goods, products or services as the goods, products or services of another person or business. The primary concern of liability for trademark infringement and trade name infringement and for unfair competition is the likelihood of consumer of customer confusion about the source of the business’s goods, products or services. The essential element of a trademark or trade name is the exclusive right of the business or business owner to use a specific word, slogan, device or product to distinguish the business’s product or service. Unfair competition, on the other hand, generally exists if the total impression or look-and-feel of the package, size, shape, color, design and name upon the consumer or customer will lead to confusion as to the source of the product.
The term “trademark” generally includes any word, slogan, name, symbol, device, or any combination of those elements adopted and used by a business or merchant to identify its goods or products and distinguish them from those manufactured or sold by others. More specifically, the term “trademark” has been defined as any word, name, symbol, or device or any combination thereof:
- Used by a person, or
- Which a person has a bona fide intention of using in commerce
and he or she applies to register on the principal register in order to identify and distinguish his or her goods, products, or services (including a unique product) from those manufactured or sold by others, and to indicate the source of the goods, even if that source is unknown.
In business litigation practice, service mark infringement is governed by the same principles as trademark infringement.
Trade Name Infringement
A trade name is a word, name, symbol, device, or any combination thereof in any form or arrangement used to identify a person’s business, vocation, or occupation and to distinguish it from the business, vocation, or occupation of others. A trade name may be a personal name, corporate name, or fictitious name and it may be expressed by the addition of words or terms that are merely descriptive of the goods manufactured, produced or sold, or by a geographical name identifying the location of the business. However, exclusive rights, in most instances, cannot attach to the use of the additional descriptive terms or words, or the geographic designation.
An unfair competition claim may be premised on, but is not limited to, the following:
- The simulation or deceptive copying of advertising methods
- The appearance of business facilities – trade dress
- A product’s shape or configuration
- The use of similar corporate, business, and professional names
- Trade dress – everything the consumer sees when the consumer looks at a packaged product (including a business facility or storefront), such as the color schemes or color combinations, the shape or configuration of product or packaging, the wording and the form and placement of working on the product or package, and the presence of any decorative symbols on the product or package
- The dilution of goodwill of a trademark
Prosecuting and defending trademark infringement litigation can be costly and time consuming. Even still, thousands of trademark infringement lawsuits are filed each year, indicating that companies will not hesitate to take action to protect their brands. Generally speaking, a company or individual can be sued for trademark infringement if there is a likelihood of confusion. The risk becomes greater if the likelihood of confusion is also combined with other similar aspects of the goods or services.
Prosecuting Trademark Lawsuits
In prosecuting trademark lawsuits, a plaintiff must have a valid mark and that it has rights (priority) senior to the defendant’s rights. The defendant’s mark must be likely to cause confusion in the minds of consumers about the source of sponsorship of defendant’s goods or services. Statutory damages under applicable trademark law include injunctive relief, actual damages, punitive/treble damages, attorney’s fees and costs. In addition, a plaintiff can actually recover a defendant’s profits. Recouping attorney’s fees is possible, but the attorney’s fees will not be awarded until the litigation has concluded, which can take several years.
In analyzing “likelihood of confusion,” courts generally look at the following factors: (1) the similarity in the overall impression created by the two marks (look, phonetics, and any underlying meanings); (2) the similarities of the goods or services involved; (3) the strength of the plaintiff’s mark; (4) evidence of actual confusion by consumers; and (5) the intent of the defendant in adopting its mark. The court may also consider other factors, including the proximity of the goods in the retail marketplace, the degree of care likely to be exercised by the consumer and the likelihood of expansion of the product lines.
To pursue trademark litigation, it is recommended that you seek legal counsel in order to choose the best forum, assert the necessary rights and claims, to identify and assert the relevant facts and to request the appropriate damages and other forms of relief.
Defending Trademark Lawsuits
If you are sued for trademark infringement, you will likely need to take action to respond to the lawsuit. Taking no action will likely result in a default judgment against you and/or your company and the plaintiff could pursue damages. Applicable law favors parties that hold the registered marks, but there are defenses to trademark actions, including laches, estoppel, unclean hands, fair use and collateral use.
Many times, the plaintiff is willing to negotiate a reasonable settlement to avoid lengthy and costly litigation and also to avoid the risks of an adverse judgment and/or rulings.
Where can I get More Information?
For more information on trademarks and potential legal assistance with trademark infringement, contact our law firm at 312-789-5676. Our Chicago trademark attorneys handle federal trademark matters nationwide, and trademark litigation cases in state and federal courts throughout Illinois, including Cook, DuPage, Kane, McHenry and Will Counties.