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How to Avoid Trademark Infringement

  • Dec 31 2018

An effective trademark strategy will not only enable you to establish a distinctive brand identity, but also help to avoid infringing on the marks of others. Trademark infringement can be costly both in terms of damages that you may be required to pay to a plaintiff and reputational harm to your business. The best way to protect your interests is to enlist the services of experienced intellectual property attorneys. In the meantime, this article is a brief discussion of trademark infringement.

What is trademark Infringement?

There are a number of factors involved in determining whether a trademark infringes on the rights of another trademark owner. The key consideration for the court is the likelihood of confusion between your mark and existing trademarks or service marks in the marketplace.

Another critical factor is the potential for confusion between similar good and services and the level of discrimination in the purchase process. Since consumers typically tend to give more scrutiny to expensive items, such as automobiles, confusion and error in purchases is less likely. That level of scrutiny is not applied to lower priced items (e.g. laundry detergent) however, and consumers may buy a product that is similar to one they normally purchase.

In addition, the court will consider the strength and similarity of the marks. A strong mark is one that has a secondary or suggestive meaning. Apple is known as a strong trademark because it has taken on a secondary meaning. As an example, Apple is not known as a fruit, but rather as a leader in the consumer electronics markets. A strong trademark can also allow for expansion of the product into other markets. Apple Music is recognized as a music and video streaming service developed by Apple Inc., not the record label founded by the Beatles, Apple Records.

Finally, trademark dilution may also be grounds for an infringement claim, particularly in the case of famous trademarks. The owner of such a mark has the right to prohibit others from using in a manner that would dilute its weakness.

Why This Matters

Obviously, a well-conceived trademark strategy starts with a search of the USPTO’s database of registered marks. Moreover, it is critically important to conduct due diligence to determine whether an unregistered trademark is currently being used in commerce. The trademark attorneys at Scully, Scott, Murphy, & Presser, PC work with clients through all phases of brand identification and trademark selection. We routinely conduct searches of the trademark registry and handle the registration process. In the event of a claim of trademark infringement, we can defend your interests in federal court or in a proceeding before the Trademark Trial and Appeal Board.

 

Posted in: Trademarks