When Brands Collide: Understanding U.S. Trademark Infringement And Remedies

It is increasingly apparent that a company is only as strong as its brand, which is, in turn, only protected by your trademarks. So what happens when a competitor starts trying to use your name or a similar one to sell their inferior products?
When this happens, you call a lawyer to discuss trademark infringement. This article covers the basics of trademark infringement and the available remedies that every business owner, brand builder, and content creator needs to understand, including:

• What is considered trademark infringement, and how you can remedy it.
• The 12 factors that determine trademark infringement in U.S. courts (you will never guess all 12!).
• How to calculate damages in trademark infringement cases, and why it is tough to recover them.

What Is Trademark Infringement? How Is It Different From Copyright Or Patent Infringement?

Trademark infringement occurs when a competitor uses your name (or a similar enough name to confuse the public) to sell similar goods and services to the ones you produce. The most common example you will see might be designer handbag knockoffs.

For example, someone selling something that looks like a Louis Vuitton handbag is copyright infringement. Or, this could even be patent infringement if they used a patented aspect, which is not to be confused with trademark infringement.

Copyright might be for the aesthetic and the look of the bag. However, if someone were to use the Gucci logo and change the G a bit to make it look like just a stylized C, that would be misleading the public and trademark infringement.

What Can Be Considered Trademark Infringement?

Trademark infringement can be quite broad, as brands need to protect themselves and their consumers. Let us consider a hypothetical example first…

Apple might be one of the world’s most powerful and recognizable brands, selling MacBooks, iPhones, and more. If someone tries to use a new brand, for example, Grapple, to sell phones and computers, it would be trademark infringement.

Even though the name is slightly different, it rhymes, so that is one strike against them. Then let us say the G is written very small, or they try to hide the G on the logo, another strike. If they add one or more apples to the logo, this might be too far. Anything can be considered trademark infringement if it is sufficiently confusing enough that people might think it is a spinoff, such as a new Apple product.

If it causes sufficient consumer confusion, for example, with the white packaging and the gray logo, even if the logo is slightly different, then that is trademark infringement. In this example, it would specifically be trade dress infringement, which is when certain distinctive features of packaging or a building are copied.

Trademark infringement doesn’t necessarily have to be the exact same, just sufficiently confusing enough to mislead the public.

What Is The Most Common Solution To Counter Trademark Infringement?

The immediate remedy available to any brand suffering trademark infringement is to get an injunction that stops someone from using it in the future. Seeking injunctive relief involves asking a court to issue a court order that says the other company has to stop.

They will be ordered to change their name, change their branding, stop using certain colors, and do anything required to no longer be confusingly similar to your brand. However, this only applies to the future. Any past harm needs to be addressed differently.

What Can I Do To Recover Damages Or Harm Done By Trademark Infringement?

It is theoretically possible to try and recover losses caused by trademark infringement. Monetary damages can indeed be claimed when you can prove lost profits, and this can certainly include past actions.

In one case, an engineering company in Texas had to send out three cease-and-desist demands in the space of just a few months. Three different entities were using similar names to the client, who found out about it when they received invoices from Request For Proposal bids (RFP bids).

Texas, New Mexico, Oklahoma, and Colorado make up a very small network. People were using the same domain, and as a result, invoices were going to the client who had never bid on the project. So, with their attorney, they checked the other websites and noticed a similar color scheme, similar layout, and a launch date within six months of the original company.

These “competitors” would have known when they registered with the Texas Secretary of State that the other brand existed already if they had even done a basic search. As a result, the company was able to send cease-and-desist notices with the help of their attorney to get the infringing companies to change their branding, their name, and their website, as well as request damages for the harm caused.

They were able to reach settlements in all three of the cases, avoiding the cost, expense, and unreliability of litigation. Fighting for such damages in court can be difficult and certainly will be time-consuming and expensive, as we will discuss later when talking about proof.

How Can I Prove Trademark Infringement?

In order to prevail on a claim of trademark infringement, you must show two things…

First, you have to show you have a valid trademark, which is entitled to protection, and that the defendant is using the same or similar mark in commerce with similar goods and services without your consent. This is easy if your trademark is properly registered.

Second, you must also show that their use of the trademark causes a likelihood of confusion among the consuming public.

What Factors Determine Confusion In A Trademark Infringement Claim?

There are a variety of factors that are considered when determining the likelihood of confusion among the public about a brand. The pre-eminent case in trademark law is DuPont Nemours, and in that case, there were 13 factors that the court named.

1. The similarity or dissimilarity of each trademark in question, which includes the appearance connotation, commercial impression, and even the auditory resemblance.
2. The similarity or dissimilarity of the nature of goods and services.
3. The similarity or dissimilarity of established trade channels that are likely to continue.
4. The type of consumer that makes the purchase and the conditions under which they do so. (This can be important in defeating opposition to trademark or infringement claims, as there is often a strong case that modern, sophisticated consumers would not easily be confused).
5. The prior trademarks’ level of recognition and fame. In this case, prior means the brand that started using it first, not the one that registered first.
6. How many similar trademarks are being used on similar products? For example, if a term or word in the trademark is diluted in this industry, that could be relevant.
7. Has actual confusion occurred? To what nature and extent? For example, if consumers have bid on projects and are sending invoices to the wrong company, that is proof that the public is being confused by these two names.
8. How long has concurrent use occurred, under what conditions with a lack of actual confusion, and how long have the two parties used these marks concurrently? Are they within a certain geographic location? Sometimes, a court will say, “You have coexisted for X number of years without confusion. Why not just stay in your areas?”
9. The variety of goods or services that use the trademark.
10. The market interface between the two trademarks.
11. The level of exclusionary rights.
12. The extent of any potential confusion
13. Any other facts that can show that there has been a negative effect due to concurrent use.

No one factor weighs more heavily than any other, but obviously, actual confusion is extremely strong if you can show it. It is not a guarantee of a win, but it is certainly something that you look for before you file a trademark infringement lawsuit.

How Do I Prove Damages From Trademark Infringement?

Unfortunately, it is not always easy to prove the damages you are claiming, especially without genuine cases of confusion to demonstrate. Typically, if you are looking for monetary damages, lost profits are the key. These are profits that you would have realized if it were not for the infringement.

Sadly, it can be difficult to prove a negative or counterfactual. If you do not have real evidence of someone signing an agreement or someone buying something else when they were looking for your product or service, it can be difficult to get monetary damages in trademark infringement cases.

Monetary damages are a secondary consideration. The most important thing is to protect your brand, your company’s identity and reputation, and the hard work they represent. This is something an experienced and effective trademark and intellectual property attorney can help you do.

For more information on Trademark Infringement And Available Remedies, or if you have become aware of a possible infringement on your trademark, book an initial free consultation today. Get the information and legal services you need by calling (214) 307 9868 today.