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The Basics of Trademark Litigation

If you are like many business owners, you take pride in the name of your business and/or product, which are likely the result of hard work and substantial investment, of both the financial and time variety. Hopefully you have worked with anexperienced Orange County trademark lawyer to protect these forms of intellectual property as too often, competitors try to capitalize on a business's success or reputation by using the same or a similar name for comparable businesses and products, often harming your business in the process. If this is happening to you, what can you do to protect your business's good name?

Legally speaking, a trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller's products and distinguish them from the products of another and is protected by both federal and state laws. Also trademark-able: names, logos, slogans, phrases, pictures, designs, product configurations, colors, and smells. Additionally, there is separate protection for the word mark, which is the text itself, and for the stylized mark, which is word in its actual script or font. The purpose of a trademark is to prevent consumer confusion, protect investment in business goodwill, and prevent unfair competition.

If you own the rights to a particular trademark, you can sue subsequent parties for trademark infringement. Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services. Broken down, there are two main elements for infringement: [1] a valid and legally protectable trademark and [2] likelihood of consumer confusion caused by the alleged infringer's use of an identical or similar mark.

There are several factors a court will look at to see if the requisite confusion exists, including:

(1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; (7) the defendant's intent.

This list is non-exhaustive. Discuss your specific case with legal counsel.

In many cases, trademark infringement claims are filed in federal court. If the trademark owner is able to prove infringement, available remedies may include the following:

  • An injunction requiring the defendant to stop using the accused mark;
  • An order requiring the destruction or forfeiture of the infringing articles;

• Financial compensation, including defendant's profits and damages sustained by the plaintiff.

To discuss potentially filing a lawsuit for trademark infringement, contact the IP lawyers at MYERS BERSTEIN today.

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