Trademark litigation can be used as both a shield and a sword. Companies file lawsuits against infringers to protect the intellectual property they worked so hard to create. Unfortunately, some companies threaten litigation on tenuous claims based on the hope that targeted companies will pay up rather than face the risk of a costly court action.
[ Related: Texas Trademark Law: What Businesses Need to Know ]
A trademark owner can show trademark infringement by proving that it owns a valid and protectable trademark, that the defendant used the trademark without the owner’s permission, and that defendant’s use of the trademark is likely to cause confusion among consumers.
Trademarks are a word, name, symbol, or design used by a person or entity to identify its goods and distinguish those goods from others. The strength of a trademark, and whether it is determined to be valid and protectable, is in part determined by where it falls on a spectrum: from generic, to descriptive, to suggestive, to arbitrary and fanciful. The closer to arbitrary and fanciful a mark is on the spectrum, the stronger the mark, and the more likely it is to be protectable.
While trademarks are established through their use in commerce, registration of a trademark with the United States Patent and Trademark Office can provide added protections. A registered trademark provides constructive notice of ownership to the public and a legal presumption that the trademark is valid. It also gives the owner the right to use the ® symbol.
A trademark owner needs to diligently protect its trademark. Over time if a trademark is used without permission of the owner, a trademark may lose its protections. The same is true if a trademark owner stops using its trademark. This is true even if the mark is registered.
At Lindquist Wood Edwards LLP in Dallas, Texas, our attorneys both prosecute and defend trademark infringement lawsuits and other intellectual property claims. We are known for solving problems either through negotiation or trial. Our lawyers have more than 30 years of combined experience representing businesses of all sizes in litigation.
If another company is using your trademark or service mark in a way that is likely to confuse consumers, our attorneys can take immediate steps, including filing an injunction to stop the infringement, to protect your brand identity.
Defending Against Infringement Claims
If you receive a letter in the mail claiming you have infringed another company’s trademark, your first step should be to call an attorney. While some infringement claims are valid, others are not. There are trademark trolls who will try to get you to pay a license fee for use of a trademark that may or may not be similar to yours.
To constitute infringement, your use of the trademark must cause a likelihood of confusion about the source of goods or services. Even similar marks may not be considered confusingly similar if they identify unrelated goods or services. Our lawyers will review your case and determine whether the infringement claim has merit.