Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the license). Infringement may occur when one party, the “infringer”, uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers. An owner of a trademark may commence civil legal proceedings against a party which infringes its registered trademark. In the United States, the Trademark Counterfeiting Act of 1984 criminalized the intentional trade in counterfeit goods and services.
Where the respective marks or products or services are not identical, similarity will generally be assessed by reference to whether there is a likelihood of confusion that consumers will believe the products or services originated from the trademark owner.
Likelihood of confusion is not necessarily measured by actual consumer confusion, though normally one of the elements, but by a series of criteria Courts have established. A prime example is the test announced by the Ninth Circuit Court of Appeals in AMF, Inc v. Sleekcraft Boats, 599 F.2d 341 (C.A.9) 1979. The Court there announced eight specific elements to measure likelihood of confusion:
- Strength of the mark
- Proximity of the goods
- Similarity of the marks
- Evidence of actual confusion
- Marketing channels used
- Type of goods and the degree of care likely to be exercised by the purchaser
- Defendant’s intent in selecting the mark
- Likelihood of expansion of the product lines
Trademark litigation often unfolds as a battle between competing sellers who argue over whether the defendant’s conduct is likely to confuse consumers. Frequently, a plaintiff defends the trademark while simultaneously protecting consumers at risk for confusion. We understand the protection of a company’s brand, image and creative work is critical to business success. HULSEYIP attorneys have represented a wide range of industries in trademark, trade dress, copyright, unfair competition, false advertising and domain name disputes.
We also litigate matters before the Patent and Trademark Office (PTO), the International Trade Commission (ITC) and tribunals around the world, where we work collaboratively with experienced local counsel.
Because an important part of trademark enforcement is effective policing, we carefully monitor our clients’ marks. We regularly issue cease and desist letters to avoid dilution of valuable trademark rights. In addition, we record registered marks with the Customs Service to prevent the importation of goods bearing infringing trademarks.