What Counts as Trademark Infringement?

Trademark law protects consumers from confusion and businesses from having their reputation misappropriated.

The core test: likelihood of confusion

Federal law prohibits using a mark in commerce in a way likely to cause confusion, mistake or deception about source or affiliation, both for registered marks (15 U.S.C. 1114) and for unregistered marks and trade dress (15 U.S.C. 1125(a)). Courts typically consider:

• Similarity of the marks in appearance, sound, meaning and overall impression
• Relatedness of the goods or services
• Strength of the plaintiff's mark
• Evidence of actual confusion
• Marketing channels and customers
• Degree of care purchasers use
• The defendant's intent
• Likelihood of expansion into each other's markets

Each federal circuit uses its own list, but the factors are similar.

Other trademark claims

• Counterfeiting: using an identical or substantially indistinguishable copy of a registered mark on the same goods; remedies are especially strong.
• Dilution: famous marks are protected against blurring or tarnishment even without confusion (15 U.S.C. 1125(c)).
• Cybersquatting: registering domain names confusingly similar to marks in bad faith (15 U.S.C. 1125(d)).

Defenses

• No likelihood of confusion
• Descriptive fair use: using words in their ordinary meaning, not as a brand
• Nominative fair use: referring to another's product, such as "repairs for [brand] phones," without suggesting endorsement
• Prior use in an area, in some cases
• Abandonment of the mark
• Genericness
• Delay by the owner (laches)

Remedies

Courts can award injunctions, the defendant's profits, the plaintiff's damages and costs; damages may be increased, and attorney fees are available in exceptional cases. Counterfeiting can bring statutory damages (15 U.S.C. 1117).

Is trademark infringement illegal?

It is a civil wrong; trafficking in counterfeit goods can also be a federal crime.

What to do

If you think someone is infringing your mark, gather evidence and consider a cease and desist letter. If you received one, do not ignore it. Registering your mark strengthens your position; see how to register a trademark. An IP lawyer can evaluate the claim.

Sources

1. Cornell Law School LII: 15 U.S.C. 1114, Remedies; infringement
2. Cornell Law School LII: 15 U.S.C. 1125, False designations of origin; dilution
3. Cornell Law School LII: 15 U.S.C. 1117, Recovery for violation of rights
4. Cornell Law School LII: Trademark infringement