Trademark Infringement

In order to prove infringement, a plaintiff must first show that it has developed a protectable trademark right in a trademark. The plaintiff must then show that the defendant is using a confusingly similar mark in such a way that it creates a likelihood of confusion, mistake and/or deception with the consuming public.

The courts have established a number of factors to determine if there is a likelihood of confusion:

  • The strength of the mark;
  • the degree of similarity between the marks;
  • the geographic and market proximity of the products;
  • the likelihood the prior owner may one day enter the market of the subsequent owner;
  • actual consumer confusion;
  • defendant’s bad faith in adopting the mark;
  • quality of the defendant’s product; and
  • the sophistication of the buyers .

Remedies available for trademark infringement: The most common form of relief granted to a successful plaintiff in a trademark infringement lawsuit is an injunction against further infringement. If the mark was federally registered, attorneys fees may be available to the plaintiff. Monetary damages are available under the Lanham Act, but rarely awarded.

Some considerations in deciding whether to file trademark suit:

  • plaintiffs present evidence of actual confusion;
  • whether the offending user is using the mark to sell similar goods;
  • whether defendant used the mark in commerce; and
  • whether the mark was federally registered.