Corporate identity crisis? Shield your brand in trademark litigation

Trademarks distinguish the source of goods or services, but if another company is using the same mark or a similar mark, you might have a legal issue.

Modern commerce operates in a marketplace of ideas. Brand identity, consumer perceptions, viral internet marketing - these concepts can be just as instrumental to corporate success as the product itself.

But when another organization tries to trade on your good name, or an overly litigious company forces you to defend your use of ideas in court, your brand capital can take a battering. Effective enforcement of your trademark rights may be the only way to cloister your unique marketplace niche from the encroachment of unwelcome interlopers.

Trademark basics

A trademark can consist of a name, symbol, word, device or any combination thereof that is used to distinguish goods or services. Your trademark indicates the true source of the goods or services being provided. While use in commerce is all that it takes to establish rights to a particular trademark, it often proves helpful to federally register a trademark.

There are several ways that trademark infringement can cause harm. When an infringer uses your trademark to sell goods or services to consumers, that equates to lost business that would have otherwise flowed to your company. When an infringer markets an inferior product using your trademark, it can lead to the consumer misperception that your brand features shoddy workmanship. Even if your trademark is used by a company that is not operating a similar business, if your mark is famous enough, the infringement might dilute the uniqueness of your mark, damaging your brand.

Trademark litigation

In general, to prevail in a trademark infringement action, an organization must first prove ownership of a valid, protectable trademark. Then, it is a matter of showing that use of the trademark by the defendant is likely to cause confusion; that is to say, consumers looking at the allegedly infringing mark would probably incorrectly believe that the goods or services being marketed are associated with another source of products or services.

If a similar business is operating in a similar market using your trademark, the potential for consumer confusion is readily apparent. Courts rarely have to look further than the mark itself when the alleged infringer is a direct competitor.

If a trademark holder and alleged infringer sell similar goods and services but are not direct competitors, the analysis for likelihood of confusion in trademark litigation becomes more complex. The court may look to a number of factors, such as the strength of the trademark, the degree of care consumers are likely to exhibit when purchasing the type of goods or services in question, the way in which the goods or services are marketed, evidence of actual consumer confusion and the intent of the alleged infringer in selecting the mark.

Occasionally, the goods or services involved are so different that use of the trademark by an alleged infringer is unlikely to create confusion (e.g., a company producing bathroom fixtures is using the same mark as a chain of fitness centers). In these cases, the trademark holder only has an avenue for relief if it can show that the mark is famous, and therefore any use of the mark by anyone else, regardless of the product or service being offered, is likely to cause confusion because the general public is so intimately familiar with the mark.

Get legal help

Do you believe another company is infringing on your trademark, or are you facing a claim that you are a trademark infringer? An experienced intellectual property attorney can help explain your options and present strong legal arguments on your behalf. Contact a lawyer today about your trademark issue.

Keywords: trademark, litigation, infringer