Many companies encounter trademark infringement during the course of their lifetime. Whether they are a victim of it, or are the ones infringing, any business should be aware of the basics regarding trademark infringements in case they run into the problem.

Defined by the Lanham Act, a trademark is “any word, name, symbol, or device or any combination thereof” used by any person “to identify and distinguish his goods … from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”

It also permits the holder of a registered trademark to file a trademark infringement claim against any person who, without the registered trademark holder’s consent uses any reproduction, counterfeit, or copy of a registered trademark in commerce, in connection with a sale, offering a sale, distribution or advertising of any goods or services where such use is likely to cause confusion, or to cause mistake, or to deceive.

In a trademark infringement suit, the plaintiff must prove:

1. That is has a protectable ownership interest in the mark; and
2. That the defendant’s use of the mark is likely to cause consumer confusion.

The trademark in question must be protectable. To be protectable it must be distinctive, which measures its significance to the purchasing public. They are classified in categories of increasing distinctiveness, including:

• Generic
• Descriptive
• Suggestive
• Arbitrary
• Fanciful

It’s the plaintiff’s burden to prove the validity of the trademark. However, federal registration provides proof of the validity and ownership and the registrant’s exclusive right to use the registered mark in commerce.

In a trademark infringement case, the “likelihood of confusion” is the main element looked at.  This aspect is evaluated through these factors:

• Strength of the mark
• Proximity of the goods and services
• Similarity of the marks
• Evidence of actual confusion
• The marketing channels used
• The types of goods/services and the degree of care likely to be exercised by the purchasers of the defendant’s product
• Defendant’s intent in selecting the mark
• The likelihood of expansion of the product lines

Being on either side of a trademark infringement lawsuit can be stressful. Knowing the basics can help when facing one. Companies that run into trademark infringement issues should contact InnovaCounsel. Their attorneys have years of experience dealing with these situations.