Filing a Trademark Case to Prevent Confusion

Protecting Your Brand: Filing a Trademark Case

In today’s competitive business landscape, your brand is one of your most valuable assets. A strong trademark not only distinguishes your products or services from competitors but also builds consumer trust and loyalty. However, when another entity uses a similar mark that causes confusion among consumers, it’s time to consider legal action. This is where trademark infringement lawsuits come into play. Infringement is the legal term used to describe the fact that a trademark has been used without permission of the trademark owner in a way to confuse customers.  A trademark lawsuit may be filed in either state or federal court depending on the situation.  In most cases, where a trademark owner has a federally registered mark, they file the trademark case in federal court.

Understanding Trademark Infringement

Trademark infringement occurs when a third party uses a mark that is identical or confusingly similar to your registered trademark without your permission. The key factor in these cases is the likelihood of confusion among consumers about the source of goods or services.

Likelihood of Confusion

Likelihood of confusion is the central focus in Filing a Trademark Case. Whether it is likely that a customer of the products or services is likely to be or is confused.  Is the use of the mark by the other party the cause of this confusion.

The Likelihood of Confusion Test

To prove likelihood of confusion, the party who has been harmed must show that a their customers are likely to be confused or has been confused.  In addition to the likelihood of confusion test, other grounds for bringing a lawsuit include reverse confusion, counterfeit goods, contributory infringement and dilution.

While there are many factors which should be considered prior to deciding to file a trademark lawsuit, the central question is can you prove confusion from the perspective of the average customer of your products or services. In assessing if there has been or is a likelihood of confusion, Courts typically consider:

1. Similarity of the marks
2. Proximity of the goods or services with consideration of the zone of expansion
3. Strength of the plaintiff’s mark
4. Evidence of actual confusion
5. Marketing channels used
6. Type of goods and degree of care likely to be exercised by purchasers
7. Defendant’s intent in selecting the mark

When to Consider Filing a Trademark Infringement Action

If you believe another entity is infringing on your trademark, it’s crucial to act swiftly in Filing a Trademark Case. Delaying action could weaken your case and potentially lead to a loss of trademark rights. Consider filing a trademark infringement action when:

1. You have a trademark registered with the USPTO, for example, or common law trademark rights
2. Another party is using a similar mark in commerce
3. The use of the similar mark is likely to cause confusion among consumers
4. The infringing use began after your first use or registration of the mark

The Process of Filing a Trademark Infringement Action

1. Cease and Desist Letter: Often, the first step is sending a cease and desist letter to the infringing party. This letter demands that they stop using the mark and may request compensation for damages.
2. Filing the Lawsuit: If the cease and desist letter doesn’t resolve the issue, the next step is typically filing a trademark case in federal court.

If a infringement lawsuit is filed, the trademark owner may ask the court to provide relief in a number of different ways, this includes asking the court or the judge to order:

• A preliminary or permanent injunction to prevent further harm;
• Impounding and destruction of the infringing goods; and/or
• Monetary damages with attorneys fees in exceptional cases.

There are exceptions and defenses against a claim of infringement, including a fair use exception, parody, abandonment, that the mark is generic, fraud, antitrust violations, estoppel and failure to file the claim timely.

Take Action to Protect Your Brand

Your trademark is a crucial asset that deserves robust protection. If you suspect trademark infringement, don’t wait to take action. Our experienced intellectual property attorneys are ready to help you navigate the complexities of trademark infringement litigation and protect your valuable brand.  If you believe someone has violated your rights or if someone has challenged your trademark or service mark, you should contact one of our trademark attorneys to discuss your options.