What a Trademark Protects
A trademark is a word, name, symbol or design identifying the source of goods or services. Protection exists to prevent consumer confusion about who is responsible for a product, which is why the legal test centres on confusion rather than on copying as such.
Rights arise from use in commerce, so unregistered marks can be protected under common law within the geographic area of actual use. Federal registration adds substantial advantages including nationwide constructive notice, a presumption of validity and access to federal court.
Registration is not required, but it changes your position
Common law rights exist from use, but they are limited to where you actually trade. Federal registration gives nationwide rights, a presumption of ownership and validity, and remedies that are difficult to obtain without it.
The Likelihood of Confusion Test
Courts weigh a set of factors rather than applying a single rule. These include the similarity of the marks in appearance, sound and meaning; the relatedness of the goods or services; the strength of the senior mark; evidence of actual confusion; the channels of trade; and whether the junior user acted in bad faith.
Strength matters considerably. Invented or arbitrary marks receive broad protection, while descriptive marks receive little unless they have acquired distinctiveness through long use and recognition. Choosing a descriptive brand name is commercially tempting and legally weak.
Related claims include dilution, available to famous marks against uses that blur or tarnish them even without confusion, and false designation of origin, which covers unregistered marks and trade dress.
Remedies
Injunctive relief is the primary remedy and often the whole point, because a brand owner usually wants the use stopped rather than damages. Preliminary injunctions are available where irreparable harm can be shown.
Monetary remedies can include the infringer profits, the owner damages, and costs. In exceptional cases, including wilful infringement, courts may award enhanced damages and attorney fees. Counterfeiting carries statutory damages that avoid the need to prove actual loss.
A cease and desist letter can provoke a lawsuit
An aggressive demand letter can prompt the recipient to file first, seeking a declaration that they do not infringe, in a forum of their choosing. Have the strength of your position assessed before sending, particularly if your mark is descriptive or your use is narrow.
Practical Steps
Before adopting a brand, clear it. Search the federal register, state registers and general commercial use. Discovering a conflict after investing in packaging, signage and marketing is far more expensive than a search at the outset.
Document your own use: first use dates, sales, advertising and any evidence of consumer recognition. These records establish priority, which is frequently the decisive issue between competing users.
If you receive a demand letter, do not ignore it and do not immediately concede. Many demands overstate the sender rights, particularly where marks are descriptive or the goods are unrelated. Get the specific position assessed before responding.
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Trademark Lawsuits: Infringement, Likelihood of Confusion and Remedies: Frequently Asked Questions
Answers to the most common questions about this case and your legal options.
What has to be proved in a trademark case?
That the defendant use is likely to cause consumer confusion about the source of goods or services, assessed through factors including mark similarity, relatedness of goods, mark strength and actual confusion.
Do I need a registration to sue?
No. Common law rights arise from use, but they are limited to the geographic area of that use. Federal registration provides nationwide rights and significant procedural advantages.
What remedies are available?
Injunctions to stop the use, and monetary remedies including infringer profits, damages and costs. Wilful infringement can support enhanced damages and fees, and counterfeiting carries statutory damages.
Is a similar-looking logo automatically infringement?
No. Similarity is one factor. Courts also weigh relatedness of the goods, strength of the senior mark, trade channels and evidence of actual confusion.
What should I do about a cease and desist letter?
Do not ignore it and do not immediately concede. Many demands overstate the sender rights. Have the strength of both positions assessed before responding.
Legal Disclaimer
This article is general legal information, not legal advice, and does not create an attorney-client relationship. Case status, eligibility criteria, and any amounts described are as reported at the date shown and may change. Consult a licensed attorney in your jurisdiction about your own situation.