Tag: trademark infringement

The International Trade Commission

The International Trade Commission (ITC) is an organization that protects trademark owners from unfair competition abroad. The goal of the commission is to prevent such goods from being imported into and ultimately sold in the United States. ITC provides valuable assistance to the owners of registered marks, but it is possible to seek remedy even if your trademark is not yet registered. ITC remedies do not include monetary relief. The ITC process, including investigations, is usually expedited and can move to trial quickly. The ITC has the authority to issue both temporary and permanent orders of exclusion to prevent infringing goods to be imported, and thus shielding the public from being confused. If the outcome of the ITC proceeding is not what is desired, it is unlikely to have this changed by filing an action again in a district court. It is possible to push for criminal penalties for counterfeiters. The ITC is an organization available to help trademark owners and applicants protect their rights.

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

Dealing with Infringement from Overseas

It is possible that infringement of your trademark rights comes in the form of importation of goods from abroad. To assist with preventing this sort of infringement it may be a good idea to register your trademark with the US Customs Service. By recording your trademark with customs you can seek to bar good from being imported which would have a mark that constitute infringement. Recordation can be done online. After this is done you can take proactive steps to assist with enforcement such as providing Customs and port personnel with information regarding suspected infringement and details about your trademark. You can also obtain Custom information and even publicize enforcement and seizures related to your trademark. If the goods are counterfeit, then Customs will either seize or destroy the goods. If it is not necessarily counterfeit, but infringement then Customs may send back goods to where they came from or allow entry if the infringing mark is removed. Customs will help protect you from infringement, but being proactive and knowing your rights will strengthen this protection.

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

Cancelling a Registered Trademark

The cancellation of registered trademark can occur one of two ways, by a court from the result of a civil action or by the United States Patent and Trademark Office (USPTO) following a cancellation proceeding. During the first five years of registration, trademarks may still be subject to arguments including likelihood of confusion with a prior filed mark, generic, and descriptive arguments. Such seniority and descriptive arguments may not be made after five years. To take the matter of cancellation before a court there must be a basis other than just cancellation, such as infringement or other issues. In addition, all other administrative remedies must be exhausted first. This usually means one had to go before the Trademark Trial and Appeal Board (TTAB) first and possibly other administrative steps. Courts may still defer to the TTAB’s decision. Cancelling a registered trademark is not an easy process and make sure you develop a strategy and understand all the steps involved.

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

Trademarks and Survey Evidence

If you are trying to prove a case of infringement either for or against your trademark, then one type of evidence that could be considered is survey evidence. Survey evidence was not always admissible and even today it is only admissible if it meets very high standards. Survey evidence is not required, but is considered significant evidence. Conducting such surveys can greatly increase the cost of litigation. Before deciding to proceed make sure you think you need it and be aware of how much it will cost. Such surveys must be performed by an independent party. This should be a qualified and credible expert who knows how to design such surveys with common criticisms in mind. The survey should be given to relevant consumers which were chosen through an unbiased process. Those chose to conduct the interview must be independent and have no knowledge of the litigation. The questions have to be clear, precise, and most importantly must not be leading. All data must be reportedly accurately and analyzed through accepted principles. Proper control must be used. This means that errors and other influencing factors are minimized. It is possible for surveys to demonstrate evidence of secondary meaning, likelihood of confusion, tarnishment, and/or dilution. Surveys can bolster your argument, but only if they are conducted properly and strictly conform with all requirements.

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

Summary Judgment

If litigation regarding your trademark cannot be avoided, then it may be best to try and end the litigation quickly. One option that can help cut costs and time is summary judgment. Summary judgment is allowed when there are no genuine issues regarding material facts. A genuine material issue of fact an issue regarding a fact that would impact the result of litigation and is an issue of fact support by evidence. The benefit of reasonable doubt is given to whichever party is in opposition to summary judgment. It is not permissible for an issue of fact to be created in order to prevent summary judgment. Summary judgment may be allowed if a case is very complex and even if likelihood of confusion is one of the issues. Minor issues of fact may also prove ineffective at halting summary judgment. Summary of judgment will likely be granted where there is a completeness of record. This means that the facts are not contested, there was a thorough discovery period, and that a trial is not necessary for proper judgment. Summary judgment has also been used successfully where there were long delays by one party and cases regarding fair use. When used correctly, invoking summary judgment can help you save time and money when fighting trademark infringement.

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

Laches and acquiescence

Laches is when the owner of a register trademark exhibits an unreasonable delay in asserting their rights regarding their trademark and in doing so gave passive acquiescence (or consent) to another trademark that may been infringement. Acquiescence is when consent is actively granted by the owner of a trademark to another trademark owner or part that may have otherwise constituted infringement. The theory behind laches is that the vigilant and not those that delay exercising their rights should benefit as this aid several things such a dispute resolution, litigation when the information is fresh, and to provide certainty for parties attempting to make investments. In order to prove laches as a defense it must be shown that the trademark owner had knowledge of use and did not take action in an excusable amount of time. It must also be shown that the defendant relied on the trademark owner’s inaction and asserting these rights now would result in prejudice. It is very important for you as a trademark owner to be vigilant and quick when asserting your rights in order to protect against potential infringement.

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

What is a parody?

A parody is when a registered trademark is imitated by another party on the grounds of humor. Even on this ground, if the mark is too similar and may cause likely of confusion then it could still be infringement. Parody is not the same as fair use as a parody defense is an argument against likelihood of confusion unlike fair use. Parody is balance between the public interest of allowing jokes and the rights of a rights of the owner of a registered trademark. The owner’s goodwill and investment must still be protected. It will be more difficult to defend a parody trademark that is used to competitively sell a product. A parody trademark used only for humor, entertainment, or criticism is more likely to be permissible. It is also important for a parody trademark to not cause dilution. If it tarnishes the reputation of the registered trademark, then dilution may be argued. Goodwill will also be looked at to see if the intent was to amuse the public or confuse potential customers.

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

Disputing Likelihood of Confusion

Showing that there is no likelihood of confusion for a trademark application cited with this issues is not easy, but not impossible. This is generally the first way to dispute likelihood of confusion, but there are other affirmative defenses which can be used. To show there is no confusion it is important to emphasize all the differences in the trademarks, goods, potential customers, and where the goods or services will be sold. Even minor differences should be used as many little differences can add up to a strong argument. This can mean things like color, text, packaging, nature of goods, advertising, quality, price, etc. Another thing that can be looked at is whether there are third parties using trademarks that may also be considered similar. If this is the case, then it may be possible to argue the public is aware of such similar marks and has the ability to distinguish between them. Based on this it may also be possible to show that the registered trademark is weak or has a significant meaning in the industry. It is of course best to avoid likelihood of confusion altogether by carefully searching and crafting your application prior to filing, but it is possible to obtain registration by showing there is no likelihood of confusion.

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

Fighting Internet Infringement

The vast scope of the internet can have major implication when addressing trademark infringement. If you find yourself on the wrong side of an internet infringement case, there may be several avenues available to overcome a detrimental outcome. One of the most common defenses is using the descriptive fair use doctrine. This doctrine allows for a defense when a registered trademark is used with good faith only to describe your goods or services. Use may also be allowed if it is nominative fair use, which means it was only used to refer to the registered trademark. In addition, commentary, parody, noncommercial use, and criticism are allowed as they are protected by the right to free speech. It is imperative to ensure that you are not using a registered trademark to attract customers. Many times this can boil down to whether the use was in bad or good faith. Always be sure you know not only your rights, but those of another trademark owner if their mark appears on your website in any capacity.

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

Can I trademark a domain name?

Yes, it is possible to trademark a domain name so long as it is used in the same way all trademarks must be used, as an indicator of source and to distinguish your goods or services from your competitors. This means that it cannot be used solely as a domain name to access a website. It is important to note that just because you have a trademark it does not mean you are entitled to use that domain name. Someone may already own it and if that is the case then the only way to obtain it is to purchase it from the owner. The similarity of domain names can be taken into account when determining whether there is a likelihood of confusion with another trademark. In addition, using a registered trademark in a domain name be considered dilution. Such cases are generally resolved through the Anticybersquating Consumer Protection Act or the Uniform Domain Name Dispute Resolution Policy (UDRP). It is important to know your rights both as an owner of a trademark and owner of a domain name.

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

Counterfeit Products

A counterfeit is a form of infringement where someone using a spurious mark that is either identical or indistinguishable from a registered trademark. There are criminal penalties, which can include hefty fines and even imprisonment, and civil remedies for counterfeiting. Counterfeit goods and even facilities and equipment used to counterfeit may be subject to seizure. For a mark to be found counterfeit it would have to be have been used on the same goods or services as the registered mark. Something may be found to be a counterfeit even if the infringing party did not know the mark was registered. Other factors include the point of view of the average person and whether or not the intention was to deceive purchasers. It is also very important to note that counterfeit may even be found with the original mark if it is found to be used in a way that deceives the public. Take steps to ensure that not only you, but those you have allowed to use your trademark are using it properly.

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

Incontestability

Registration is only the first step in fully securing your trademark. It is possible to add another level of protection to your trademark by obtaining incontestable status. Your trademark is eligible for this status if you have used your trademark continuously for five years after registration. To obtain this you must file a section 15 affidavit of incontestability.  Why would a trademark owner want this? Incontestability provides the exclusive right for you to use your trademark and if questions arise it can be used to show that your trademark’s registration is conclusive evidence of your ownership. The affidavit will also shield your trademark from being contested as descriptive. Incontestable status can also help when it comes to fighting those attempting to infringe on your rights. Incontestable status will not help if you engaged in fraud to obtain your mark or the status. In addition, it is important to maintain proper maintenance of your mark even if it is incontestable as it can still be abandoned.

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