What is trademark infringement?

When it becomes necessary to enforce trademarks, many questions can arise. Here’s the basics.

If someone is using my mark without my permission, can I sue?

To win an infringement suit, a trademark owner must show a likelihood of mistake, confusion, or deception of consumers by the defendant’s use of the similar mark. The key factors are whether the marks are confusingly similar and whether they are used on goods that are the same or “related.” This includes goods or services into which the trademark holder’s business is reasonably likely to expand.

For example, if a strong trademark is used by one party in connection with shoes, and a second entity starts using an identical mark on boots, infringement is likely to be found. In determining whether there is a likelihood of confusion, courts may consider several factors:

  • Strength of the mark;
  • Similarity of marks in sound, meaning, or appearance;
  • Similarity or relationship of the goods or services;
  • Commonality of distribution channels;
  • Sophistication of purchasers;
  • Fame of the mark;
  • Number and nature of similar marks in use on similar goods or services; or
  • Evidence of actual confusion.

In general, infringement is evaluated based on the “totality of the circumstances.” Evidence of actual consumer confusion, however, tends to weigh particularly heavily in favor of a finding of infringement. Survey evidence, to show a mark’s strength or a likelihood of confusion, can also be very important.

Do owners of unregistered marks have any rights?

In some countries (known as “registration countries,”) only the owner of a registration has rights, even against most prior users. World famous marks are often the exception. In other countries, an earlier user retains the rights to obtain a registration and to cancel the registration of a later user, within a limited time period.

Some countries, such as the US, also permit infringement lawsuits when one party has an unregistered mark. In general, however, the rights asserted on unregistered marks are more limited than those asserted on registered marks.

When should the registration process begin?

Since significant rights to a mark in most countries are obtained by registration, applications should be filed on important marks in the countries of concern, preferably before the mark is used, and generally soon after it has been selected. Filing prior to use provides time to choose another mark in the event the registration is objected to by a third party or a country’s trademark office.

If the product or service is already being marketed with a mark, it is especially important to file as soon as possible because other parties may legally obtain title to the mark by filing first in some countries.

Learn more about our approach to trademark infringement.