Trademark Infringement and Viable Defenses
Trademark infringement occurs when a company uses a mark that is similar enough to a protected trademark that the new mark is likely to cause confusion among the consuming public. Courts consider a number of factors, including:
- The strength of the mark. Does the original mark have clear standing in the marketplace?
- The proximity of the goods. Are the goods of the same general type?
- The similarity of the marks. Do the marks appear similar?
- The evidence of actual confusion. Have consumers bought the second product believing it to be the first?
- The similarity of marketing channels used. Are the products sold or distributed in the same manner?
- The degree of caution exercised by the typical purchaser. Is the consumer likely to make a casual purchase, or think twice before buying? The value of the item is a consideration for this factor.
- The defendant’s intent. Did the user of the allegedly infringing mark intend to deceive the public and unfairly take market share from its competitor?
The two major defenses to trademark infringement are fair use and parody. In general, there are two types of fair use: descriptive fair use and nominative fair use. The descriptive fair use defense is viable when one company uses another’s descriptive trademark in good faith simply to describe the quality of its product and no consumer confusion results. Nominative fair use generally is permissible as long as (1) the product or service in question is not readily identifiable without use of the trademark, (2) only so much of the mark as is reasonably necessary to identify the product or service is used and (3) use of the mark does not suggest sponsorship or endorsement by the trademark owner. Parody allows artistic and editorial use of a trademark if the use is not tied directly to commerce.
A defendant can also argue that the plaintiff lost the right to a trademark due to abandonment, improper licensing or assignment, or because the mark has become generic.
Damages Available for An Infringement Case
In a successful trademark infringement lawsuit, the plaintiff company could receive a number of remedies, including:
- Defendant’s profits. If the established brand does not show losses, it may still have been damaged by sales that wrongfully went to the infringing brand.
- Damages sustained by the plaintiff. If the plaintiff has lost sales, the court could order the infringing company to compensate for the drop-off.
- Costs of the action. The defendant must pay for the plaintiff’s attorney fees and court costs.
- Injunctive relief. The court shall order the infringing company to discontinue the use of the offending trademark.
A court may order treble damages if the plaintiff proves bad faith, such as a deliberate attempt to deceive the public.
Contact a Dependable Trademark Litigation Attorney in New Jersey
CoffyLaw, LLC provides quality legal representation to companies engaged in trademark infringement disputes. Our cost-effective litigation services benefit plaintiffs and defendants throughout New Jersey. To schedule a consultation, call CoffyLaw, LLC, or contact us online.