Trademark Infringement, Enforcement & Rights

/Trademark Infringement, Enforcement & Rights
Trademark Infringement, Enforcement & Rights 2019-02-19T11:14:40+00:00

Trademark Enforcement

After your trademark has been registered, you will have legal ownership that gives you the right to protect your trademark against companies that infringe on your trademark and also against the importation of products that infringe your trademark rights. If you find that your trademark rights have been infringed by a domestic company, the best strategy is to contact a trademark specialized attorney, because, depending on the situation, the right legal approach may differ significantly.

Establishing Trademark Rights

You obtain your trademark rights by:

  1. Using your trademark in your commercial activity or
  2. Filing a trademark registration application to register your trademark with the U.S. Patent and Trademark Office (USPTO) and also using your trademark in the commercial activity within the amount of time indicated.

You don’t need to register with the USPTO if you want to establish trademark rights, you can do that just by using your trademark in your commercial activity. Registering with the USPTO helps you secure a legal ground for obtaining registration in foreign countries and prevent importation of infringing foreign products. It also helps you to sue in the federal court any eventual infringes and it serves as an evidence of ownership.

A trademark involves two types of rights:

  • the right to register the trademark and
  • the right to use it.

The general rule regarding the right to register is that the first person or entity to use a trademark in the commercial activity has the ultimate right to register the trademark. When it comes to the right to use, the decision can be taken only by a court, but a federal registration offers a significant advantage in court when usage rights are being decided.

The first step in choosing a trademark is to research your proposed mark through an attorney specialised in trademark law. This way you know if you can adopt and use the desired mark without infringing on someone else’s rights.

Because of the proactive character of the Trademark Law, just the likelihood of confusion between two marks is enough to cause infringement. We are generally speaking about confusion, mistake or deception between two marks in regard to source, affiliation or sponsorship.

Likelihood of confusion is influenced by similarities, seniority and market environment:

Similarity between two trademarks in regard to their appearance, sound, and/or meaning or similarity between goods or services (e.g., breakfast cereal vs. breakfast bars).
The strength of senior trademark or the likelihood that a senior trademark will expand into the product category of a junior trademark. Trademarks that are very well known can be damaging even if they are used in unrelated areas.
The intended adoption by a junior trademark of a senior trademark to knowingly benefit from its reputation.
The importance that buyers give to the trademark for specific goods and the overlap of marketing environment and channels of trade. Are both trademarks presented to the market by the same channels or are the products sold by totally different channels?

Under the Federal Law or the laws of several states and with the expertise of a trademark attorney, you have the possibility of a dilution action which, as defined by Section 45 of the Lanham Act, is based on “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties OR (2) likelihood of confusion, mistake or deception.”

From the standpoint of evaluating trademark infringement the virtual and real world are very similar. When simultaneous use of mark by different owners exist, the criterion is evaluating good faith basis for seeking the same domain name.

First of all start by considering the “brick & mortar” elements of infringement. The second step is to search for elements of bad faith on the part of the domain name owner including registration with the intent of selling, use of your trademark in meta tags with the intent of redirecting customers to his website or use of a third party website to imply authorized connection to your product and trademark.

You can use the Anticybersquatting Consumer Protection Act (ACPA) which involves a suit brought in Federal Court or The Uniform Domain Name Dispute Resolution Policy (“UDRP”).

The complexity and uncertainty of domain names claims is due to the fact that trademark rights are territorial and limited to related products/services, and domain names tend to cross this boundaries. This is an issue that requires specialised attorneys and careful consideration.