It is common for trademark infringement actions to begin with cease and desist letters. However, some of these claims are made illegitimately, and it is important to respond accordingly. Someone claiming trademark infringement must prove a valid trademark, unless the trademark is registered, and the defendant’s use of the mark has created a likelihood of consumer confusion, mistake, or deception.

Trademarks are presumed to be valid if they are registered. However, if they are unregistered, the person claiming to be the owner will need to show he or she developed a protectable trademark and that the mark is sufficiently distinctive to be considered a valid trademark. Specifically, the trademark needs to be fanciful, arbitrary, or suggestive in order to be a valid trademark. If the mark is descriptive (or a surname) or generic, the person claiming to be the mark’s owner may not be able to show a valid trademark. However, the mark is valid even if it is descriptive if the owner can show a descriptive mark has acquired a secondary meaning.

Likelihood of Confusion

After showing a valid trademark, a plaintiff will need to show that the defendant is using a mark that is the same or confusingly similar to his or her mark, such that consumers may believe that the defendant’s products or services are the same as the plaintiff’s products or services, or that the defendant is sponsored, affiliated, or connected to the plaintiff.

There are eight factors that courts look at to determine whether there is a likelihood of confusion:  

  • The similarity in impression of the two marks, including appearance, meaning, or phonetic similarity;
  • The similarity of goods or services;
  • The strength of your mark;
  • The evidence of actual confusion;
  • The defendant’s intent;
  • The physical proximity of goods or services in the marketplace;
  • The consumer’s likely degree of care in purchasing the goods or services; and
  • The likelihood that product lines will be expanded.

The first five factors are examined in all trademark infringement lawsuits. The most important factors are the similarity of the marks and the similarity of goods or services to which the marks are applied. It is possible for an identical unregistered mark to be used in the same geographical region without infringement, as long as the goods or services being offered by the plaintiff and the defendant are sufficiently unrelated. Courts do not always consider the last three factors.

Remedies for Trademark Infringement Claims

Monetary damages, including the defendant’s profits, damages, and the costs of the action are available for trademark infringement, but they are not always awarded. More often, the court will award a successful plaintiff an injunction against any further infringement or dilution, as well as attorneys’ fees when the mark is registered with the USPTO. However, if a plaintiff can show the bad faith of a defendant in a trademark infringement suit, treble monetary damages may be awarded.

Affirmative Defenses to a Trademark Infringement Suit

There are two affirmative defenses available to defendants in a trademark infringement lawsuit:  fair use and parody. A fair use occurs when a descriptive mark is used in good faith for its primary meaning, and no consumer confusion is likely to result. For example, “fish fry” has been held to be a descriptor that could be used without infringing a plaintiff’s ownership in the mark known as “Fish-Fri.”

Nominative use is also a fair use defense. It occurs when using a mark is necessary in order to identify another producer’s product rather than the alleged infringer’s own product. For example, if a magazine were to run an online contest asking readers to vote for their favorite character on The Gilmore Girls, and the owner of the mark “The Gilmore Girls” sued, the court would be likely to hold the use to be a privileged nominative use because the magazine would not be able to identify the show without using the mark, and the limited use did not suggest endorsement or sponsorship by the mark owner.

Parodies of trademarks can be protected under the First Amendment if they are not too commercial. For example, a pig-like character in a Muppets movie was found not to violate the owner’s rights in the Spam trademark. How a court will determine this issue can be difficult to predict because different courts analyze this protection in different ways. Some simply add the First Amendment to the eight factors. Others balance First Amendment rights against the degree of likely confusion.

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