Trademark litigation attorneys can assist you in trademark infringement litigation cases. Trademark infringement is the unauthorized use of a trademark or service mark in connection with goods and/or services in a way that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.
What constitutes trademark infringement?
Trademark infringement may vary from jurisdiction to jurisdiction, but to establish a violation under the U.S. Lanham Act, a trademark infringement plaintiff must prove to the court that the trademark is: (1) a valid and legally protectable mark; (2) the plaintiff is the owner of the mark; and (3) the defendant’s use of the mark is likely to cause confusion. In some jurisdictions like the European Union, a trademark owner may be able to prove trademark infringement without having to prove a likelihood of confusion.
Elements Needed to Assert TM Infringement Claim
To successfully assert a claim of trademark infringement there are generally three elements that must be proven. First, a plaintiff must demonstrate that the trademark was in “use” by the alleged infringer. Secondly, the U.S. Lanham Act also requires that use of the trademark is “in commerce.” Lastly, the plaintiff must demonstrate that there is a “likelihood of confusion.”
Legal Defenses to Trademark Infringement
When accused of trademark infringement, there are a number of legal defenses available. The available defenses include:
- unclean hands
- fair use, and
- collateral use
Trademark Infringement Remedies
Remedies for trademark infringement under the Lanham Act are injunctive relief, accounting for profits, damages, attorneys’ fees when appropriate, and costs. If a plaintiff does not want to sue for trademark infringement, they may still be able to sue for:
- trademark dilution
- unfair competition
- passing off
- depreciation of goodwill
Trademark owners may also be able to bring lawsuits if they are victims of trademark counterfeiting and cybersquatting.
TM Registration Requirements to Bring Trademark Infringement Litigation Action
Note that in some jurisdictions, registration of a trademark may be a prerequisite for bringing trademark actions in court. Generally, registration of a trademark is encouraged. There are several benefits to registration. The benefits include, for example:
- title to the trademark;
- prima facie evidence of ownership and validity;
- regional or national protection of the trademark;
- use of official marking within the jurisdiction;
- permission to bring actions involving the mark in court;
- deterrence of others from unlawful use of the trademark;
- defense to infringement; as well as
- increased availability of monetary damages
If you become embroiled in trademark infringement litigation, you should immediately seek out the counsel of experienced trademark attorneys.
About Klemchuk LLP:
Klemchuk LLP is an Intellectual Property Law, Litigation, and Transactions law firm. The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights. The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution.
Klemchuk LLP also publishes the following blogs: Intellectual Property Law, Conversations with Innovators (interviews with thought leaders), Leaders in Law (discussions on timely law topics), and Culture Counts (thoughts on law firm culture as well as the business of the practice of law).