Trademark rights are a critical component of many intellectual property portfolios, and for some companies, lies at the very core of their value proposition — depending on how much a company relies on its “brand,” aggressive enforcement of trademark rights may be fundamental to the continued health of the company.
In the event that another person or entity has infringed upon your trademark, you can sue and potentially recover damages, and ostensibly, obtain an injunction preventing the defendant from using infringing mark at-issue.
Speak with an experienced attorney at an intellectual property law firm in Washington DC for further guidance on your claims.
Of course, it’s worth considering the various defenses that may be used to avoid trademark infringement liability.
Let’s take a quick look.
Fair Use Exception
Fair use is an affirmative defense in the trademark infringement context — simply put, if the defendant’s conduct fits into “fair use,” then they can not only avoid liability for trademark infringement, but they can also continue to use the infringing mark without your consent.
In the fair use context, the typical case is one of parody. A defendant may argue that they are using your trademark to poke fun at or otherwise satirize the product. On the other hand, you can get around this defense by showing that the defendant is using the “parody” mark for commercial purposes, in order to sell a product or service.
Customers Are Not Confused
Customer confusion sits at the heart of trademark infringement litigation. If customers are confused by the similarities between the two marks, then there is a greater likelihood that the courts will decide that infringement has occurred.
Defendants may show that customers are not actually confused (and that there is no possibility of confusion) by introducing evidence of: a) the dissimilarity of the marks; b) the fact that the products symbolized by the marks are in entirely different categories; or c) that the marks are being used exclusively in different geographical areas.
When litigation proceeds, each party will generally introduce expert testimony supporting their argument. They may also introduce data retrieved from customer surveys regarding potential confusion between the two marks.
Trademark Has Become Generic
Some trademarks — even if they are sufficiently strong when they are first created — later transform into generic language. Xerox and Kleenex are the prototypical cases, and Google is currently battling with this trademark issue. If a mark is ever so popular that it becomes generic (i.e., used to describe an entire product category, or something else entirely), then it cannot be infringed. In order to avoid this issue, you’ll have to regularly affirm the strength of your mark, and its arbitrary nature, in a public forum.
Trademark Was Never Protectable
In some cases, the defendant will claim that your trademark was never valid and protectable in the first place. For example, suppose that you start a laptop company, and you sell only white-colored laptops. The name of the company is a descriptive mark: White Laptop. The mark does not have secondary meaning, however, so it is likely not enforceable. If the defendant utilizes the term “White Laptop” to describe one of their products, it will likely not be considered infringement.
Speak with one of our knowledgeable intellectual property attorneys today to learn more about your options regarding trademark infringement.
