Enforcing Trademark Rights
Created by FindLaw's team of legal writers and editors | Last reviewed March 21, 2017
You are the owner of a famous brand of shoes and athletic clothing. You have made millions off of your product with the well-known, three-stripe trademark on the side of your track jackets and running shoes. Yet this last season you’ve noticed a trendy clothing designer has been using a confusingly similar four-striped mark on their garments and footwear. What can you do?
If you follow what athletic giant Adidas America did, you can bring a lawsuit alleging that the defendant "intentionally adopted and used counterfeit and/or confusingly similar imitations of the Three-Stripe Mark knowing that they would mislead and deceive consumers into believing that the apparel was produced, authorized, or licensed by Adidas, or that the apparel originated from Adidas.” In other words, you can go about enforcing your trademark rights through litigation.
Below you will find key information about how to bring about a trademark enforcement action and how to find an experienced trademark attorney in your jurisdiction.
Trademark Case Basics
If you believe your trademark has been infringed by another person or business entity, there are a number of things you will need to prove to a jury. As the plaintiff , you must prove:
- You are the owner of a valid trademark;
- You have priority of rights; and
- Defendant's mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties' marks.
Going back to the Adidas example, the plaintiff would have to prove ownership of the Three-Stripe trademark, that Adidas has priority to use the Three-Stripe mark, and that when clothing is sold with a four-strip mark or similar, there is likely going to be confusion by consumers as to who is manufacturing the product.
Registering Your Trademark
A good rule of thumb is to always register your trademark. Owning a federal trademark registration on the Principal Register will give the plaintiff a legal presumption of the first two requirements from above. What does that mean? It means that all Adidas has to do to meet the first two criteria in a trademark lawsuit is to provide documentation of being on the Principal Register. For Adidas, that is the proof that gives them the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. Also recall that a person or business is not technically required to register their trademark in order to have some rights in its use, but registration has many advantages.
There are a number of possible remedies a court has at their disposal, should you prove successful in a trademark infringement case. First, a court can order damages such as the cost of litigation, attorney’s fees, and any profits the defendant made from illegally using the trademark. Second, a court could order the defendant to cease using the mark indefinitely. This is called an “injunction,” and is likely to be a part of the court’s order in many cases. Finally, a court can order the destruction of all infringing items. There may be more remedies depending on the court, but these are the most common.
Enforcing Trademark Rights: Related Resources
- Intellectual Property
- What is Included in the Application?
- Intake Form: Meeting With an Attorney to Trademark a Business Name
Learn More About Trademark Rights
You don’t have own a famous shoe brand to be able to protect you trademark in court. If you believe your trademark is being used without your permission, you might have a case and your day in court. If you want to learn more about your options, speak with a trademark lawyer in your jurisdiction today and find out what options you may have.
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