Trademark infringement involves the unauthorized use of a company’s defining mark by another company, usually for the purpose of misleading the buying public into thinking they are buying the larger company’s product. An example would be a new computer company using an apple as a logo on their computer to trick buyers into thinking they were buying a Mac.
While the basic concept of trademark infringement is simple, things get complicated in the murky details of an infringement claim. Here are three important details to understand from the beginning.
1. Most trademark cases are civil lawsuits, not criminal charges.
If you are being accused of trademark infringement, the accusation is almost certainly coming from another party in a civil lawsuit. Corporations and other businesses that have trademarks registered with the copyright office have significant resources invested into their trademarks and their protection.
If you are the holder of a trademark that you think is being used without your authorization and to your detriment, your primary recourse is through a right of action in civil court, not through the police and the Attorney General’s office. While you should report instances of infringement to the authorities, you will obtain compensation through a civil claim.
2. A trademark infringement action can be difficult to win.
Trademark infringement claims can be extremely complicated. In order to protect commerce, civil law maintains a high standard for proving trademark infringement.
Although there is a legal presumption of valid ownership and exclusive use of a mark that is properly registered, a plaintiff stiff has significant elements to establish in a winning case.
According to the United States Patent and Trademark Office,
If you are bringing a claim, you need to prove:
- That your priority rights to use of the mark are “senior” to those of the other party (you had rights to exclusive use of the mark before the other party used the mark)
- That the other party’s use of the mark is likely to cause confusion to the consumers
- That the other party used the trademark without your consent
- That the unauthorized use of your trademark caused you damages
Each of these elements presents its own difficulties and potential defenses. It is critical to work with an experienced intellectual property lawyer if you are bringing an infringement claim or defending against one.
3. The stakes are high in these cases.
Although most of these cases proceed on the civil side, there are still extremely high costs for a verdict or judgment against you.
The damages alone a plaintiff can claim include loss of profits, which can include disgorgement of profits, royalty costs and the costs of the corrective advertising required to remedy the damages. In addition, a losing defendant could face augmented punitive damages, statutory damages and the cost of the plaintiff’s legal fees.
Whether you are bringing a claim or defending against one, you can see that there is a lot of money at stake. These cases should not be handled lightly, and you should only trust the help of an experienced attorney to handle your case.