Trademark Theft: Everything You Need To Know

Trademark theft is the use of a name, slogan, word, phrase, or symbol that is used in commerce by another business.3 min read

Trademark theft is the use of a name, slogan, word, phrase, or symbol that is used in commerce by another business. This is known as infringement and is defined by the court based on the likelihood of confusion by consumers due to unauthorized use of the mark.

Trademark Protection

Intellectual property (IP) includes trademarks as well as patents, copyrights, and trade secrets. Infringing on the trademark of another business constitutes fraud because this type of misrepresentation is legally prohibited.

If you sue another business for trademark infringement, most often the court will order the defendant to stop using the mark if your claim is successful. If you have federally registered your mark, you can request that the defendant pay your attorney fees. Although the Lanham Act allows financial damages to be collected in trademark lawsuits, they are rarely actually awarded.

Defending your trademark in court can be expensive because you have the burden to prove that the mark caused market confusion that led to a loss of revenue. This may require research and expert witnesses.

Factors Considered by the Court

• The court requires direct evidence of similarities that could create confusion in their actual context in the marketplace. Evidence of past confusion requires this factor to be more heavily weighted.
• If either party plans to expand the business to compete with the other, use is more likely to be considered infringement. Expanding product lines or geographic area are both considered here.
• If there is no plan to expand in either of these areas, this does not mean confusion will not exist.
• The court uses the standard of a regular buyer, though buyers with specialized expertise in a specific area will be held to a higher standard. This is often true with products that are unusual, expensive, and/or highly technical. The standard of care is determined with consideration to the other factors as well.
• The marks will be considered in their context, including how and where the products are sold and in what circumstances they would be purchased. Evidence reviewed includes advertisements, store location, and the type of businesses in question.

Relatedness

The concept of relatedness in this context does not mean that the products are necessarily in the same industry, but it does mean that the typical consumer could associate them with one another. Most cases fall into one of these three groups:

• Similar marks indicate likely confusion when products are direct competitors.
• Products that do not compete but are related require other factors to determine whether confusion may occur.