Trademark Infringement Law FAQ
Trademarks protect an individual or company's brand. They are a type of intellectual property (IP) that protects short phrases, designs, names, devices, words, or symbols used in connection with goods and/or services.
The purpose of trademark protection is to provide exclusive rights to the trademark owner, allowing them to have their goods or services stand out from other companies in the industry. Trademark infringement is when another company uses a service mark that a different company has trademarked or when the mark is so similar that it will confuse the general public ("likelihood of confusion test").
If you are a start-up, entrepreneur, or small business owner looking for more information about trademark law, this article will answer various trademark infringement questions, including:
- What is trademark infringement?
- Is it trademark infringement if someone else uses my company's name but for a different business?
- What is an example of when a similar mark would not confuse customers?
- How are trademark rights established?
- How do I protect my trademark?
- What are remedies for trademark infringement?
- How do trademark infringement cases happen?
- How do you prove trademark infringement?
- Can you use a trademark if it is not registered?
- How do I register a trademark?
When a company uses a trademark without permission from the trademark owner, then they are infringing on that mark. They do so in a way that will likely confuse or deceive the public about the source of the services and/or goods. This can include using the same or similar mark on goods or services in the same industry or related goods or services. An example would be using the trademarked slogan "Just Do It" for a shoe company without Nike's permission.
Not necessarily. Since trademark infringement law seeks to prevent customer confusion, a specific company can use the same or similar trademarked name in an unrelated business. If an ice cream company called itself Nike, it likely would not confuse a consumer. Why? The ice cream company sells ice cream, while Nike sells shoes. A customer would not walk into an ice cream store expecting to find shoes.
While performing a routine search for his company online, Bob discovers that another company uses his name in a different line of business. Bob's company builds business communications networks for customers in California, and he has named his business Bob Builds IT. While searching for his small business online, he ran across Bob Builds It. This company is a small carpentry business in Ohio. Bob now wants to know whether this is a violation of trademark law.
The likelihood of confusion test looks at where the marks are used, including geographic areas. In this situation, it is unlikely that anyone would accidentally buy a computer from Bob Builds It instead of paying for carpentry services. These two businesses are in two different states as well. The likelihood of confusion test looks at where the marks are used. This includes geographic areas. These businesses could exist at the same time, with no overlap of customers.
There is likely no trademark infringement.
Like copyright, trademark protection does not require formal actions. Legitimately using the mark in a business or commercial setting establishes these rights. Using the logo or name on a social media account that has no business attributes associated with it will not establish your rights. If you used the same logo or name on a business social media account, then it would establish a superior right.
You can federally register your trademark with the United States Patent and Trademark Office (USPTO). Federal trademark registration creates a legal presumption that the registrant is the trademark owner. A trademark owner who registers their trademark with the USPTO can take legal action by filing an infringement lawsuit in federal court.
Federal trademark registration has certain advantages, including better protection from trademark infringement. One benefit is being able to file an injunction in federal court to stop someone in any state from using your mark. A large incentive is your ability to license the mark for money. A license allows you to "rent" your mark to another business or person for a profit.
Another less exclusive option, that only provides state protection, is to register your mark with your state's secretary of state office.
The remedies for trademark infringement include:
- Issuing a cease and desist letter
- Injunctions to prevent further use of the infringing mark
- Damages for any losses
- Damages are monetary, such as attorney's fees, court costs, and the infringer's profits from using the mark
It is a rule that you must seek legal remedies and enforce your trademark while it is federally registered. Failure to do so can result in your mark being considered "dead." At that point, you no longer have any trademark protections.
Trademark infringement cases involve the unauthorized use of a brand name, business name, or mark protected under intellectual property rights. Trademark litigation cases come up when a party uses a trademark without the permission of the trademark owner. That use then leads to confusion among consumers, which has the potential to harm the reputation of the trademark owner's business. This can be avoided by doing a trademark search on the USPTO trademark database to see what marks are registered or in use.
In intellectual property law, you need first to show that you own a mark and have used it in commerce. Next, you show that the infringing mark is identical or similar to your registered trademark. After that, a business owner shows that the similar trademark is being used in the same or similar industry. Finally, you show that the use of that mark will lead to a likelihood of confusion, deception, or mistake among consumers.
Yes, you can use a trademark that is not federally registered or state registered. However, you will not have the same IP protection provided to a registered trademark.
Applicants can file two types of trademark applications: (1) Intent to Use or (2) Use in Commerce. Intent to Use applications are used when you have not used a mark in business yet. You must use the mark within six months of approval of your application. If you are using your mark already, then you file the Use in Commerce application.
Trademark applications generally include the following information:
- The name of the applicant (individual or business)
- A name and address that the USPTO can use for correspondence
- A depiction/drawing of the mark
- The Nice classification of the goods/service for which the mark is used
- A specimen of use (if applicable)
- Filing fee(s) (range from $225 to $350 per Nice classification)
Please note that there are specific procedures one must follow when applying for federal trademark registration. Not following these rules will result in a rejection of your application.
Getting Legal Advice To Avoid Trademark Infringement
The best source to discuss small business and trademark law is an experienced trademark attorney. FindLaw's section on Trademarks and Small Business Law will help you know what questions or topics to discuss with your lawyer and business team.
Was this helpful?
You Don’t Have To Solve This on Your Own – Get a Lawyer’s Help
Meeting with a lawyer can help you understand your options and how to best protect your rights. Visit our attorney directory to find a lawyer near you who can help.
Contact a qualified business attorney to help you identify how to best protect your business' intellectual property.