Trademark Infringement
What constitutes infringement and how to protect your rights.
What is Trademark Infringement?
Trademark infringement occurs when someone uses a mark that is the same or confusingly similar to your trademark in connection with goods or services that are sufficiently similar to yours. The key test is whether consumers are likely to be confused about the source of the goods or services.
Note: For a viable trademark infringement claim, you don't need to prove actual confusion—only that confusion is likely among consumers.
Likelihood of Confusion Factors
Courts consider multiple factors when determining if infringement has occurred, and while those factors vary depending on what court you are in, the items listed below are commonly considered, particularly items 1 and 2:
- 1Similarity of the marks (sight, sound, meaning)
- 2Similarity of the goods or services
- 3Strength of the plaintiff's mark
- 4Evidence of actual confusion
- 5Defendant's intent in adopting the mark
- 6Marketing channels used
- 7Sophistication of consumers
- 8Likelihood of expansion into related markets
Potential Remedies
Injunctive Relief
Court order requiring the infringer to stop using the mark
Monetary Damages
Recovery of profits, actual damages, and costs
Enhanced Damages
Up to triple damages in cases of willful infringement
Attorney's Fees
In exceptional cases, the court may award legal costs
Destruction of Infringing Goods
Court-ordered destruction of counterfeit products
Protecting Your Rights
As a trademark owner, you have a duty to police your mark. Failure to enforce your rights can lead to weakening of your mark or even loss of trademark protection. Here are some steps you can potentially take on your own:
- • Monitor the marketplace for similar marks
- • Document instances of confusion for potential litigation
- • Enroll your brand in the Amazon Brand Registry (assuming your trademark registration covers goods)
Here are some steps that should be performed by trademark counsel:
- • Send cease and desist letters when you discover infringement
- • Oppose conflicting applications at the USPTO
- • Submit takedown notices to online platforms and marketplaces
- • Implement a trademark watch service to monitor for relevant third party trademark filings
Concerned about potential infringement of your trademark?
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