FAQ - U.S. Trademark
Infringement courtesy of International Trademark Association
1. What is trademark
Trademark infringement is the commercial use of the same or similar mark by
another with respect to related goods or services which is "likely to cause
confusion" with respect to actual or potential customers of the trademark
owner's goods or services. Many factors are considered in determining the
existence of a "likelihood of confusion" including the similarity of the marks
and their commercial connotation, the similarity or relationship of the
respective goods or services, the commonality of trade channels, the
sophistication of purchasers, the fame and strength of the trademark owner's
mark, the number and nature of similar marks in use on similar goods or
services, and the existence of actual confusion. No one factor is necessarily
controlling and in general infringement is evaluated on a case by case basis
based upon the totality of circumstances.
2. Must an infringer
be a competitor?
No. The focus of trademark
infringement analysis is on the confusion of actual or potential customers.
Accordingly, an infringer's products or services need only be sufficiently
related to the trademark owner's products or services so that it is likely that
both are promoted to and/or used by common customers.
3. How does trademark infringement differ from trademark dilution and unfair
Generally, the existence of a likelihood
of confusion is not required to establish either dilution or unfair competition
which is not based on infringement. Dilution focuses primarily upon the strength
of a trademark owner's rights and remedies are usually limited to injunctive
relief. Although unfair competition may be based on trademark or trade dress
infringement, unfair competition is often based upon false or misleading
statements in marketing and advertising materials. However, in many cases of
dilution and false advertising, trademark infringement also exists.
4. How can one
In the United States, the federal
trademark law called the Lanham Act authorizes suit to be brought for
infringement of either registered or common law trademark rights, 15 U.S.C.
Section 1114 and Section 1125(a), respectively. Remedies include injunctive
relief to prohibit infringement, the impoundment and destruction of goods
bearing infringing trademarks, an infringer's profits, the trademark owner's
actual damages and court costs. Attorney's fees may be awarded in exceptional
cases. Where the infringement involves the use of a "counterfeit" or virtual
duplicate of a registered mark, statutory damages of up to U.S. $1,000,000 may
be awarded along with the imposition of an award of reasonable attorney's fees
unless the infringer proves extenuating circumstances. Alternatively, treble
damages are available in cases involving counterfeit marks or where infringement
is willful. Most states in the United States also have their own trademark
statutes. Hence, a trademark owner generally has the option of pursuing a
trademark infringement action based on both state and federal law and in either
state or federal court.
5. How does federal
registration aid in redressing trademark infringement in the United States?
federal registration, the trademark owner acquires nationwide constructive usage
of a mark as of the trademark application filing date. Such constructive rights
serve as a basis for asserting infringement against subsequent users of the
mark. A federal registration is prima facie evidence of ownership, but failure
to use the registration symbol ® with a registered mark can substantially impair
a trademark owner's ability to recover damages in an infringement action.