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Trademark infringement involves the unauthorized use of a trademark. Infringement can be intentional or unintentional, always resulting in potential (or real) consumer uncertainty about who is providing particular goods/services.
There’s plenty to keep in mind when it comes to trademark infringement, from avoiding it yourself to fixing it if it happens to you. Keep reading to learn more.
What Are the Types of Trademark Infringement?
Trademark infringement can be broadly split into two categories: direct infringement and indirect infringement. These infringement types differ significantly, especially in regard to who is infringing and in what way.
What is direct trademark infringement?
Direct trademark infringement is the type of infringement most people are familiar with. It happens when two similar or identical trademarks promote related or identical goods/services. For infringement to be present, there must be a likelihood of confusion as to who is selling the offerings.
When direct infringement occurs, the infringing party may or may not be aware of the violation. Their intention might be to mislead or deceive consumers, or they might not even know their trademark causes confusion with another.
Direct Infringement Liability: To be liable for direct trademark infringement, a party needs to use an infringing mark to sell, advertise, or otherwise distribute goods/services.
What is indirect trademark infringement?
Also called secondary infringement, indirect trademark infringement happens when a third party assists in the creation or distribution of direct infringement. Indirect infringement cannot occur unless direct infringement has also occurred.
There are two types of indirect infringement: contributory and vicarious.
- Contributory Infringement
Contributory trademark infringement happens when a party knowingly helps facilitate direct infringement. For example, a clothing manufacturer that knowingly produces counterfeit The North Face® apparel for a seller would be participating in contributory trademark infringement.
- Vicarious Infringement
Vicarious trademark infringement occurs when a party benefits financially from infringement and has the ability to stop or otherwise control the violation. The party does not necessarily need to know that the specific infringement has occurred. For example, if counterfeit goods are sold at a market, the market would potentially be vicariously infringing.
Indirect Infringement Liability: Indirect trademark infringement extends liability boundaries. Parties such as shipping companies, clothing manufacturers, marketplaces (both online and in person), and internet service providers could potentially be liable for contributory or vicarious trademark infringement.
How to Avoid Trademark Infringement
Avoiding trademark infringement means researching, researching, and researching some more. If you don’t know whether marks confusingly similar to yours exist, there’s no way to know whether you’re infringing until it’s too late.
To make sure your trademark is available, you’ll want to conduct a clearance search. This means diving into various websites and platforms to find out if a mark like yours is already promoting items or services like yours.
The Trademark Electronic Search System (TESS) and Official Gazette are good places to start. These are U.S. Patent and Trademark Office tools that show federally registered, abandoned, and applied for but yet-to-be registered trademarks. You may also want to widen your search to include state business registries, state trademark databases, and social media.
How do you stop trademark infringement?
Once you know you’re not infringing, the next step is to stop trademark infringement if it happens to you. To keep you aware of any infringing activity, you’ll want to monitor your trademark for the life of your mark.
While it may seem like you should be able to report trademark infringement to the USPTO or other authorities and have them handle it, that’s not how it works. It’s not only your responsibility to discover infringement, it’s also your responsibility to decide what to do about it.
If you discover your trademark is being infringed upon, there are a few courses of action you might consider taking:
- Send a cease and desist letter
- File a notice of opposition against a trademark application
- File a petition to cancel a trademark registration
- Sue for infringement in federal court
These are all legal actions. If you plan to embark on any of them, or are wondering whether it’s in your best interest to do so, you may want to seek the help of a trademark lawyer.
What happens if trademark infringement is proven by a court?
If trademark infringement is affirmed by a court, the infringer may be ordered to stop using the mark, destroy/turn over the goods or materials in question, pay damages, and/or pay the trademark owner’s attorney fees.
With Northwest’s Trademark Service, we conduct a clearance search prior to submitting your application so you don’t have to.
Trademark Infringement Examples
Trademark infringement can be hard to fully grasp without considering some real-word examples. Let’s look at two cases, one focusing on direct infringement and the other focusing on indirect infringement.
Dairy Queen vs. W.B. Mason
Dairy Queen lost a direct infringement lawsuit against office supplier W.B. Mason in 2022. Both companies use the trademark “Blizzard”: one in relation to ice cream, and the other in relation to bottled water (and paper products, but the water matters more here).
The court used a multi-prong test to determine whether likelihood of confusion was present in the Dairy Queen vs. W.B. Mason case, examining, among other things:
- Strength of Dairy Queen’s Blizzard trademark
- Similarity of goods offered under the trademarks
- Intent of W.B. Mason (was the alleged infringement intentionally deceptive or done in good faith?)
- Consumer care when selecting the goods in question
The court found there was no likelihood of confusion between the two companies’ Blizzard trademarks. The trademarks are allowed to coexist in the marketplace.
Why does this matter?
The Blizzard case shows how many considerations there are in a trademark infringement lawsuit. It’s not necessarily enough for identical trademarks to promote potentially related goods (in this case, the broad category of consumables). Much more must be proven by the parties and taken into account by the courts.
Coach vs. Goodfellow
In this 2013 indirect trademark infringement case, flea market owner Frederick Goodfellow lost to Coach, Inc. The luxury accessories brand was awarded over $5 million in damages plus $186,666 in attorney fees. Here’s how it shook out.
As a sole proprietor, Goodfellow ran the Southwest Flea Market in Memphis and rented out up to 100 booths every week. Some booths were rented by vendors selling counterfeit Coach products. After Coach learned of the counterfeit selling, they sent a cease and desist letter. The infringement continued, even after additional attempts to stop it, and a lawsuit ensued.
Goodfellow’s liability was in question: As a flea market owner, could he be contributorially liable for trademark infringement taking place at his market?
Especially because of Coach’s attempts to alert Goodfellow of the infringement, he knew (or had reason to know) that trademark violations were afoot. For the contributory liability claim, this knowledge was key.
Why does this matter?
While there is plenty to learn about this case from a trademark infringement perspective (big businesses mean business! cease and desist letters matter!) it’s also interesting from a general business perspective. Because Goodfellow operated as a sole proprietor vs. an LLC or corporation, he was personally on the hook for damages.
Trademark Infringement FAQs
Is it trademark infringement if the goods/services are different?
No. For infringement to be found, not only must the trademarks be the same or similar, so too must the goods/services for sale.
What is trademark dilution?
Trademark dilution involves the unauthorized use of a famous trademark. It is similar to standard trademark infringement, except that likelihood of confusion is not a requirement—the marks do not have to promote similar goods/services in order for dilution to be in play.
What is a cease and desist letter?
In relation to trademarks, cease and desist letters typically outline demands and expectations around alleged infringement or dilution that has been discovered.
What is a trademark opposition?
Opposing a trademark application is a way to take action against a mark that you believe will cause you damage if registered. Oppositions occur during a 30-day period when a trademark has been “published” by the USPTO in the Official Gazette, but has not yet been registered. To start the process, you file a notice of opposition with the Trademark Trial and Appeal Board (TTAB).
What is a petition to cancel a trademark?
You can petition to cancel a trademark after it’s registered with the USPTO. These are filed with the TTAB. If approved, cancellations result in the trademark’s loss of federal registration.