Infringement and Remedies

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Trademark infringement is a violation of a person’s trademark rights.

• owner has the right to use the trademark in commerce in association with certain goods and services
• protection begins as soon as the owner starts using the trademark in commerce
• Federal and state governments do not enforce trademarks
  • owners must enforce their own rights and sue people who violate

Two Types of Trademark Infringement Cases

1. Use of a similar trademark that is confusing or deceptive to the customer

   • owner can bring this infringement action for innocent infringement and for willful infringement
   • the trademark owner has the burden of proof
   • must prove:
     • plaintiff owns a valid trademark
       • E.g., USPTO registration
     • defendant used a similar trademark in commerce
       • can use own advertising materials to show use in commerce
     • defendant’s use of a similar trademark is likely to confuse consumers
       • courts will compare the plaintiff’s and defendants’ trademarks
       • will look at:
         • how similar the marks are
         • similarities between the goods and services they represent
         • intent in using a similar trademark
       • court can order the defendant to stop using the trademark

2. Use of a similar trademark that dilutes the value of a famous trademark

   • trademark dilution
   • specifically applies to famous trademarks
   • Only holders of famous trademarks can file a lawsuit for trademark dilution
   • Dilution occurs when:
     • a trademark is used to promote different goods
     • the use of a similar trademark tarnishes a famous trademark
       • when it is used in an unflattering light

Remedies

• injunctive relief
  • court order to stop infringers from using their trademarks in a confusing or diluting way
• damages
  • get damages for the defendant’s profits in using the trademark, their own damages, and costs of the litigation