Fair use occurs when a descriptive mark is used in good faith for its primary, rather than secondary, meaning and the consumer is not likely to confuse. File a patent application online with EFS-Web Single interface replacement for EFS-Web, private PAIR and public PAIR Check patent application status with Patent Center and private PAIR Pay maintenance fees and learn more about filing fees and other payments Resolve related disputes with patents with international patent applications File a trademark application and other documents online through TEAS. Learn about our current legislative initiatives. Learn how to protect intellectual property in other countries.
Find upcoming programs related to IP policy and international affairs What is trademark infringement? A trademark owner who believes that his trademark is being infringed can initiate a civil action (ie,. However, in most cases, brand owners choose to sue for infringement in federal court. Even when a plaintiff chooses a state court, the defendant may take the case to federal court. Instead, a court may rule that (you are not infringing the trademark), (a defense prohibits the plaintiff's claim (s), or (there are other reasons why the trademark owner has no right to prevail).
The particular factors considered in a likelihood of confusion determination, as well as the weighting of those factors, vary from case to case. And the quantity and quality of evidence involved can have a significant impact on the outcome of a violation lawsuit. In addition to alleging likelihood of confusion, the owner of a trademark may claim the dilution of the brand, stating that he is the owner of a famous brand and that the use of his trademark diminishes the strength or value of the brand owner's brand by blurring the distinctive character of the brand or tarnishing the brand image by connect it to something unpleasant or reprehensible, even if there is no risk of confusion. An experienced trademark attorney, considering the particular circumstances of your case, should be able to provide you with an opinion on the validity and soundness of a trademark owner's claims.
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If you sue someone for infringing or diluting your trademark, you can file several defenses to that lawsuit. The two main defenses are fair use and parody. The fair use defense applies to descriptive trademarks and argues that the mark was used in good faith because of its primary meaning, not because of the secondary meaning it is protected. A similar defense is called nominative use, which occurs when the use of the brand is necessary to identify the other product.
For example, a running magazine can't survey who uses what Nike products without using the Nike trade name. Another defense is when the brand is used in a parody or other critical analysis. In these situations, the First Amendment right to freedom of expression outweighs the rights of the trademark owner. In trademark litigation, the three main claims are trademark infringement, unfair competition, and trademark dilution.
With this in mind, let's take a look at the basics related to trademark infringement. The plaintiff must have a protected trademark before claiming trademark infringement. For a trademark to be susceptible to protection, it must be “distinctive. The distinctive character of a trademark measures its importance to the buying public.
In general, the more likely it is that a brand will be remembered and associated in the public mind with the brand owner, the greater protection afforded to the brand by trademark laws. Courts have stated that the conceptual strength of a brand depends to a large extent on the obviousness of its connection to the good or service to which it refers. The less obvious the connection, the stronger the brand and vice versa. The main element of trademark infringement is the “likelihood of confusion” (ie,.
When assessing the likelihood of confusion between related goods or services, the following factors are taken into account. If you have questions about trademark infringement, please contact me. Nicholas focuses his practice in the areas of non-property tax disputes in Michigan, business entity selection, corporate transactions and information technology. Brand owners have to worry about the possibilities of dilution when applying for a brand or starting to use a brand; because you may be in a completely different industry than another brand, but if there is a truly famous brand, even if you're so far away that you're not going to be confused, you may have to deal with a claim for dilution.
Constructive use results from filing a federal trademark application based on a good faith intention to use the mark. For example, many trademark owners submit recall notices to eBay to remove auctions for infringing products, such as counterfeit products, for example. Fourth, a trademark should never be used as a noun or verb and, therefore, should never become plural, possessive, or gerund. If you discover that the trademark you are considering is already being used by a third party in connection with the same or similar products or services, or that a third party is confusingly using a similar trademark in relation to the same or similar products or services, you should look for another trademark.
For example, a pig-like character in a Muppets movie was found not to violate the rights of the owner of the Spam brand. Monetary damages, including defendant's benefits, damages, and costs of action, are available for trademark infringement, but are not always awarded. So, for example, if two companies offer, for example, car parts with similar brands, it seems that initially it is a very strong case for trademark infringement. Each case is unique, but the first thing you need to do is investigate the facts, assess how much merit the lawsuit has, evaluate if there are the same type of settlement opportunities that Mark discussed earlier.
And also, if you allow one or two others to use something that's a little similar and then others appear and maybe they're a little more different, but they show up, and all of a sudden you have a handful of people who are using something similar to your trademark and it can be it's hard to stop any of them or all of them because they'll all point to each other and say that you've never watched your brand in the past. A federal registration of a trademark may be obtained if the mark is used in the normal course of trade and, if it is a trademark, the products identified by the brand are sold or transported in the trade regulated by Congress, or, if it is a service mark, the services identified by the brand are provided in the said trade or are represented in more than one state. An experienced lawyer can help you navigate the scope of trademark law and ensure that you make the best decisions for your business. .