Tag: Infringement

Preliminary Injunctive Relief

If your trademark rights are being infringed then you may need to act quickly to avoid possible harm to your brand, business, and/or reputation. Infringement can have lasting negative consequences for your trademark and putting an end to infringement as quick as possible should be a main goal. Preliminary injunctions are a way to provide some measure of relief for infringement prior to and during a trial. While such injunctions are of course dependent on the end result of the trial, they often serve to predict the outcome or put it to rest early. A preliminary injunction may be granted if irreparable harm may occur before the trial, there is a chance of success for the plaintiff, the harm to the plaintiff outweighs the harm to the defendant, and if the process has been done quickly to stop infringement. Irreparable harm means harm which cannot be compensated monetarily, such as harm to a reputation or the quality that is associated with the trademark. Speed is important here, as it always is in trademark law. The sooner one asserts their rights to prevent harm from infringement the more likely they are to prevail.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Pleading a Claim

No matter what cause of action you intend to plead it is essential to provide more than just an accusation. Facts must be provided which establish an alleged plausible claim for relief. There are many forms of infringement that can be pleaded such as infringement of a federally registered mark, violation of the Lanham Act, false advertising, common-law infringement, unfair competition, dilution, misappropriation, and deceptive trade practices. It is important to note that even unregistered marks have certain rights. This can apply to trade dress including packages, design, and color. Likelihood of confusion and misrepresentation can com come into play for unregistered marks. Also remember that false advertising does not just apply to what you say about your own product, but also what you say about your competitor’s products. There are other causes of action as well such as violation of right of publicity or privacy, interference of business relations or prospective economic advantage, defamation, breach of contract, and disparagement. Many of these causes of action can, and usually do, overlap with each other. When pleading a claim be aware of all the facts and be sure of exactly what you are pleading and wish to obtain.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

 

What is Fair Use?

Fair use is a defense against trademark infringement. It is used when a third party uses a registered trademark to describe their own goods. If this is demonstrated, then it means the use did not constitute being used as a trademark and thus not infringement. This is determined by looking at how prominently the registered trademark was displayed by the competitor, whether this was done in good faith, and whether or not it was used as a description. Courts have been inconsistent in determine whether likelihood of confusion has an impact on fair use. The degree of possible confusion could be a factor. It is important to note that fair use is different from advertisements which compare goods. Advertising comparison will be judged using likelihood of confusion. Nominative use may be permissible so long as the trademark has to be used to identify the described goods or services, the use is as limited in scope as possible, and the use does not suggest an endorsement by the owner of the trademark. Always be mindful when using the mark of a competitor under fair use to ensure you are not infringing on their rights.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Abandonment and Indication of Origin

Nonuse is not the only reason a trademark can be abandoned, so is loss of significance as an indicator of origin. This can occur for a variety of reasons. One major reason can be uncontrolled licensing and a failure to maintain the quality of the goods. The owner has a duty to ensure the goods that use his trademark are consistent with the quality consumers expect from the mark, otherwise the consumer is being deceived. Another reason can be failure to take action against third party use and infringers. If the owner does not use their rights to stop such usage, then there is no way for a consumer to know where the goods are coming from. If goodwill is not transferred along with the trademark, then the assignment may be invalid and the trademark abandoned. Evidence of transferring goodwill, such as other assets, may be required to demonstrate this. Lastly, material changes to the goods which completely change the goods or make a product of inferior quality could lead to abandonment. To avoid abandonment, remember to not only use your mark, but use it in a way that it clearly indicates the source of your goods or services.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

What is false advertising?

Advertising is considered false when the things such as origin or description or representation of a fact are false or misleading during promotion or advertisement. False or misleading means that it is likely to cause confusion or deceive. False advertising can apply to a claims about a person’s own goods or services or to a claims about a competitor. For a false advertising claim it must be shown that a false or misleading statement was made in regards to advertising or promoting goods and there was deception that would likely influence a consumer’s purchase and cause injury. If both parties are competitors then there should not be easy to demonstrate that injury is possible, however if they are noncompetitors then probable injury may be tougher to prove. A possible defense to a false advertising claim is “puffing.” This is the idea that advertising usually involves exaggeration and that is acceptable to a certain extent and does not necessarily make the claim false. Before making claims make sure they are properly vetted and cannot be misconstrued.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Dilution Law

Dilution is when another trademark would infringe on your trademark’s reputation or identity. This can occur even without a finding of likelihood of confusion. The goal of dilution law is to prevent damage to a trademark owner based on the name. The two main forms of dilution are blurring and tarnishment. Blurring occurs when a trademark would weaken the standing of a registered trademark by “blurring” the mental image consumers and others have when they think of the registered mark. This has the potential to diminish the mark’s uniqueness. Tarnishment is when a registered trademark could be linked to other products which would harm the way the mark is perceived. An example could be low quality or unsavory goods. The goods do not need to be related to tarnishment. There are many other factors to be considered as well such as fame of the mark and recognition, distinctiveness, and degree of similarity.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Intent and Trademarks

Your intentions can come into play when trademark infringement is being determined. What would be looked at is if you were actually intending to compete with the conflicting mark or if you were attempting to deceive possible customers. To determine this, things such as similarity of trade dress like packaging or colors and font used for the text can be analyzed. It is also always important to demonstrate that you were operating with good faith. Good faith can be shown by ensuring a complete and thorough search for conflicting marks was done, you did not believe there was a conflict, and that the mark you selected accurately reflects your goods or services. Bad faith may be found if styles and other elements were copied or there is no credible reason to adopt such a trademark. Before filing make sure you are operating with good faith and not trying to infringe on the rights of another trademark owner.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.