Trademarks serve as “source identifiers” to consumers about where a particular product or service is derived from. Most commonly, trademarks consist of a word, phrase, and/or design. However, a trademark can also be a sensory mark such as a color, sound, or even a scent, that—due to its distinctive use—becomes a symbol of a company, product, or service.
Read MoreDamages for trademark counterfeiting include the same damages as trademark infringement plus an additional potential statutory damage
Read MoreIn general, damages for trademark infringement include actual damages, the infringer's profits, and potentially attorney's fees and treble damages. For more information about trademark infringement damages, see our blog post, What are trademark infringement damages under the Lanham Act?
Read MoreThe following defenses may be asserted in response to a trademark infringement claim:
Fraud
Genericness
Acquiescence
Limitations
Laches
Estoppel
Fair use
Waiver
Abandonment
Junior user
Invalid registration
Innocent user
License
Unclean hands
Trademark misuse
First Amendment protection
Prior judgment/release
Read MoreFor more information, see our blog post, What are Trademark Infringement Damages?
Read MoreA trademark protects the goodwill a company or brand has built surrounding themselves as a source of goods or services by establishing intellectual property rights in any word, phrase, and/or design that serves to identify the source of the product or service in the eyes of consumers. Holding the rights in a trademark prevents others from using the mark in relation to those applicable goods or services. This allows the company or brand to avoid any lost sales, unfair competition, and dilution or smearing of its good name. For more information, see our post, What does a trademark protect?
Read MoreIn order to prevail on a trademark infringement claim, one must prove two elements: (1) that one possesses a legally protectable trademark; and (2) the defendant’s use of the same or similar mark creates a likelihood of confusion as to source, affiliation, or sponsorship.
Read MoreA trademark is a word, phrase, and/or design that serves to identify the source of a product or service in the eyes of consumers. A trademark need not be registered with the U.S. Patent and Trademark Office (“USPTO”) in order to be protected, but with federal registration the owner of the mark has put others on notice that the trademark already is in use. Federal registration also provides the registrant with the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. In addition, a registrant has the ability to bring an action concerning the mark in federal court and can file the trademark registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
Read MoreA cease and desist letter is an informal means of enforcement used by the owner of certain intellectual property to notify an unrelated third-party that they have use of the same or similar IP that infringes upon the owner’s rights and allows that third party an opportunity to “cease and desist” all such infringement right away, in an effort to avoid more formal, and costly, enforcement tactics.
Read MoreThe first step in protecting valuable intellectual property rights is to ensure you do, in fact, own such rights. Since patent, copyright, trademark and trade secret rights arise differently, you should first ensure that your use is enforceable against what you have identified as an infringing use. The next step is to determine what options are available to you and which of those options are within your budget and appetite for conflict. Enforcing IP rights can take many forms, ranging from cease and desist letters, to UDRP proceedings or arbitration, proceedings with the Trademark Trial and Appeal Board, or federal lawsuits.
Read MoreFailing to register a trademark with the United States Patent and Trademark Office (USPTO) deprives the trademark owner of various rights and benefits not available at common law, including nationwide rather than local protection, diminished burden of proof for trademark infringement, public notice of the owner’s rights in the trademark, and an easier transition in seeking foreign registrations.
Read MoreLicensing Agreements, particularly in the context of intellectual property, are written, legal contracts between two parties wherein the owner of the IP at issue gives permission to another party to use the IP. The agreement, between the licensor (the IP owner) and the licensee (the permitted party) should set forth the specific terms of the agreement between the parties, including the specific IP at issue, whether the license is exclusive or non-exclusive, terms of use, term of the agreement, what rights are retained by the licensor, and other key terms.
Read MoreThe transfer or sell of IP rights generally occurs through a written assignment of ownership rights from the owner to another party. An assignment is a complete transfer of all ownership in and rights to the IP included in the assignment. A license, on the other hand, is a written agreement allowing a third party to use certain IP for a stated term and does not transfer ownership of the IP.
Read MoreU.S.-based owners of various forms of intellectual property need to understand that U.S. laws typically do not protect against foreign infringement. The best means of protecting IP internationally is to seek formal registration in whatever countries your business operates.
Read MoreA copyright protects the tangible expression of an idea, whereas a trademark protects a particular designation of source for a particular good or service.
Read MoreWhile both refer to specific trademark rights, the TM is used to identify trademark rights that are not federally registered with the United States Patent and Trademark Office (including pending applications), while the R mark identifies a mark that is obtained federal registration with the USPTO.
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