Intellectual Property

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Trademark Infringement

What is Trademark Infringement?

Generally, to win a trademark claim [for infringement], a plaintiff [whom is the suing party] must establish that (1) the [trade]marks are valid and legally protectable; (2) the [trade]marks are owned by the plaintiff; and (3) the defendant’s use of the [trade]marks to identify goods or services likely to create confusion concerning the origin of the goods or services. Opticians Ass’n v. Independent Opticians (3rd Cir.1990)

Likelihood of Confusion

In determining the likelihood of confusion concerning the origin of the goods or services, [w]here the products or services are different, the prior owner’s chance of success is a function of many variables:

  1. the strength of his mark,
  2. the degree of similarity between the two marks,
  3. the proximity of the products,
  4. the likelihood that the prior owner will bridge the gap,
  5. actual confusion,
  6. the reciprocal of defendant’s good faith in adopting its own mark,
  7. the quality of defendant’s product, and
  8. the sophistication of the buyers. Polaroid Corp. v. Polarad Elects, Corp. (2d Cir. 1961)

These “Polaroid Factors,” also referred to as the “DuPont Factors,” listed above can be daunting and often require the detailed analysis of a skilled attorney. Whether you are a Trademark owner and feel that someone has infringed upon your Trademark or are worried that you may have infringed upon someone else’s Trademark, please contact an attorney. The attorneys at McClanahan Powers assist not only in the litigation aspect of Trademark infringement but additionally in Cease and Desist Letters and Letters of Demand as well as Back Royalties and Back Licensing.

Trademark Trial and Appeal Board (TTAB)

Attorneys at the firm protect clients’ trademarks in actions before the Trademark Trial and Appeal Board (TTAB). The TTAB is an administrative board that handles adversary proceedings involving trademarks. This includes oppositions during registration, where a party opposes the registration of a mark after notice has been published in the Official Gazette. The TTAB also hears matters involving:

  • Cancellations of existing trademarks
  • Trademark interference and concurrent use issues
  • Appeals

If you have received a notice of opposition or notice concerning another action before the TTAB, it is important to respond. Ignoring an opposition or other action can put your trademark in jeopardy. Hearings before the TTAB are similar to a trial and follow the civil rules of procedure. You risk losing your trademark and your registration fee.

Cease and Desist Letters

The issuance of a Cease and Desist letter is one mechanism that intellectual property attorneys implement to combat against possible infringement of an owner’s protected intellectual property (IP). Once it has been determined that someone is infringing on your IP, you need to take action to stop the infringer from continuing to infringe on your IP. Filing a lawsuit can be costly and time consuming. A faster and more cost effective approach is to contact the other party first through a Cease and Desist Letter. This is used to put the infringer on notice that they are infringing on your intellectual property and to stop immediately. Depending on the nature of the infringement, it may be advisable to demand retribution damages for the infringing content. This can only be determined on a case by case basis.

Consequently, consulting with an experienced intellectual property lawyer can help you determine, if you are protected, if there is indeed an infringement, the extent of the infringement, and whether you need to pursue any other remedies (i.e. retribution damages, issuing a DMCA notice with the applicable internet service provider (ISP), search engine, webhost, etc.).