Trademarks can offer essential protection against rival competitors seeking to use your intangible brand assets without proper authorization.
Have you ever…
Contemplated using the word “super hero” in the title page of a comic book you’re writing? The word “super hero,” which dates back to 1967, was a trademark for both Marvel and DC Comics, and they actively pursued other comic book publishers in court who dared use this word on their title pages. (In September, 20204, a U.S. Trademark Office tribunal canceled the “super hero” trademarks at the request of London-based Super Babies comic book artist, who argued that Marvel and DC cannot “claim ownership over an entire genre” with their trademarks.)
Owned a business in the computer or the music industry? Choose another fruit. Between 1978 and 2007 Apple Corps (owned by The Beatles) and Apple Inc. fought over competing trademark rights over the name “Apple” and their respective apple logos. Apple Inc. paid Apple Corps. Over $500 million in 2007 to acquire all the “Apple” related trademarks.
Hankered for fried chicken? Although Louis Vuitton and Louis Vuiton Dak are brands that are in two very different spaces (luxury goods and food services), following an international infringement battle, the court ruled the restaurant’s name and logo are too similar to the designer’s brand.
What is trademark infringement?
These are all examples of trademark infringement, which occurs when another company or entity uses a similar or identical mark in connection with similar goods or services, leading to confusion among consumers. (The TM symbol with the trademark lets consumers and competitors know you’re claiming it as yours, even if you haven’t filed an application to register your trademark.)
What are common forms of trademark infringement?
There are numerous types of trademark infringement, including the following:
- Direct infringement: The is most frequent type of infringement, when individuals or entities use a trademark that is identical (or strikingly similar to) an existing trademark.
- Confusingly similar (indirect) infringement: This form of infringement occurs when a trademark is not exactly the same as an existing one, but is similar enough to confuse consumers.
- Dilution: Dilution happens when someone uses a trademark in a way that blurs or dilutes its reputation or unique quality, even if a company uses a well-known trademark to promote an unrelated product.
- Counterfeiting: This involves the manufacture and sale of fake products that have a trademark without the authorization of the trademark owner.
- Cybersquatting: A type of domain name infringement, cybersquatting involves registering, trafficking, or using a domain name that is identical (or confusingly similar) to an existing trademark, diverting Internet traffic away from the legitimate owner’s website that could cause loss of revenue and reputation.
Fair use is a common defense in trademark infringement. It allows party to use a protected mark for its descriptive meaning, rather than as an actual trademark.
By understanding these common types of infringement, entities can take steps to prevent unauthorized use of their trademarks and safeguard their brand identity.
Detecting trademark infringement
To detect trademark infringement, you can monitor for unauthorized use of your trademark online and offline, and consider using specialized IP providers to assist.
- Trademark watching: A critical part of trademark ownership, trademark watching helps identify potential infringement by tracking trademark filings and locating identical or similar marks.
- Online market monitoring: 24/7 online monitoring detects and addresses infringement, counterfeit sales, domain name theft, and other brand abuse across digital platforms and marketplaces.
- Offline monitoring: On-site investigations, inspections, and test purchases—from the end customer up the supply chain—can detect, capture, and preserve potential evidence of trademark infringement, especially counterfeit products.
- Customs and border protection: Critical in anti-counterfeiting efforts, this is the recordal of trademarks and design patents with customs agencies around the world to support them in detecting, seizing, and destroying counterfeit goods at the point of importation.
When determining if there is trademark infringement, courts factors such as the similarity of the marks, the similarity of the products or services, and the likelihood of confusion among consumers are key considerations.
Enforcing trademark infringement
A trademark owner who believes its mark is being infringed may take one or more of several actions.
- Send a cease-and-desist letter. This is typically a first step in most enforcement strategies. It identifies the infringement and demands that it stop immediately.
- Issue a takedown notice. This is a legal request to remove or disable access to online content that is allegedly inverting on the trademark owner’s rights. The Digital Millennium Copyright Act (DMCA) allows copyright holders to send takedown notices, and many trademark holders use the same process.
- Conduct a raid or seizure: This is a legal action taken to combat infringement, particularly counterfeiting. Local law enforcement agencies or other authorities conduct raids on individuals or entities suspected of manufacturing, distributing, or selling counterfeit goods, with the goal of confiscating them to deter future infringement.
- File a lawsuit: In some cases, when a claimant’s assertions have questionable merits, lawsuits cannot be avoided. Courts can issue an injunction, order damages, and/or order the destruction of infringing items.
Protecting against trademark infringement
Understanding trademark infringement is crucial for businesses to protect their intellectual property and maintain their brand reputation. By implementing trademark and brand protection strategies, companies can safeguard their market share, avoid costly litigation, and ensure the longevity and success of their brand in today’s competitive marketplace.
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