How to Avoid Accidental Trademark Infringement

If you are starting a business, one of the first things you need to consider is how your brand will be represented to consumers. For your business to be successful, you will have to select a name, logo, catchphrase, or symbol that makes you stand out in the marketplace. However, with so much competition, there’s a chance that your mark might already be in use and have been registered with the United States Patent and Trademark Office (USPTO). No matter how unique you think your mark is, it’s critical to take steps to avoid accidental trademark infringement.

What is Trademark Infringement?

Trademark infringement is defined by the USPTO as the unauthorized use of another’s mark in such a way that it would likely cause confusion, deception, or mistake as to the source of the goods or services. To prevail in a claim for infringement, a plaintiff must show that they own a valid trademark and have priority rights. It’s not necessary to establish actual confusion between two marks. Rather, an accuser must only prove that consumers would likely be confused.

The following factors would be considered to determine whether a likelihood of confusion exists:

• Appearance of the design
• Phonetic sound
• Word placement
• Connotation
• Commercial impression
• The relatedness of the goods or services

Other factors that might be evaluated by a court in determining infringement include where and how the goods or services are marketed and sold, the strength of the plaintiff’s mark, the conditions under which the goods are purchased, and the range of prospective consumers. A court would also look to see if there is any evidence of actual confusion.

In trademark law, it does not matter if the trademark infringement was on purpose, or it happened by mistake. A party accusing another of trademark infringement is not required to show willful intent. Significantly, ignorance of trademark law is not a viable defense to an infringement action.

How Can You Avoid Accidental Trademark Infringement?

When you’ve spent so much time and capital building your brand from the ground up, the last thing you need is to find out you can’t use the mark that embodies it. In such cases, not only would brand development and marketing efforts be wasted, but re-branding could result in a negative perception among consumers and create bad publicity.

The best way to avoid accidental trademark infringement is to do your diligence before you begin using the mark in commerce to determine if a similar mark is already being used by another company. Importantly, the standard for infringement is not whether two marks are identical. It is whether they are similar enough to confuse consumers. Conducting a trademark search before you file your application with the USPTO can help you identify any similar marks already in use.

A comprehensive trademark search doesn’t stop with a knock-out search using the USPTO’s TESS database to identify exact matches. Trademarks are highly nuanced, and the search technology can only recognize exact matches. With a comprehensive search, it is imperative to look for phonetic similarities, trademarks that have the same meaning, and any other variations that could make two marks similar.

There are several types of trademark searches that should be conducted to ensure an accurate and thorough clearance report. If no issues are found in the TESS database, you should look at the state government databases. While companies aren’t required to file an application in every jurisdiction in which they sell their products or services, local business owners may choose to file only in their state. Regardless of whether a trademark is registered with the USPTO, if a state registration was filed before you began using the mark in commerce, it may mean that person has priority rights to the mark.

A common law search looks for marks that haven’t been registered in any database. It involves searching through news, businesses, public records, legal records, and the internet. The objective of this type of search is to find out if your mark is already being used by another business — even if it’s not registered with the USPTO.

What Are the Consequences of Accidentally Infringing Upon a Trademark?

In the event another business accuses you of infringing upon their trademark, you could be forced to give up use of the mark by which consumers recognize your brand. Before litigation is commenced, you might receive an informal letter from the accuser advising you that they have priority rights to the mark. If you continue to use the mark after being notified of your mistake, a formal cease and desist letter may come from the accuser’s attorney.

If you do not stop using the mark, the accuser may serve a summons and complaint on you, requiring you to respond by a certain date. These documents are filed with the court and commence the lawsuit. If you fail to respond to the papers and appear in the action, the court could enter a default judgment against you.

In a case involving accidental trademark infringement, you may have several options. You can challenge the claimed trademark, refute that the owner has established infringement, or assert another defense. In some cases, it may be possible to negotiate a settlement with the other party in which you agree to take certain actions to avoid the likelihood of confusion.

Remedies available to a plaintiff who prevails in a trademark infringement case are generally limited to injunctive relief. This would prohibit you from continuing to sell products that bear the mark. An injunction can bar your use of the mark entirely, or it can come with specific terms and conditions. You might also be required to pay the plaintiff monetary relief for the damages they incurred by your use of the mark — including their lost profits and the legal costs they incurred for bringing the action.

Contact an Experienced Trademark Law Attorney

Accidental trademark infringement can be a serious matter, resulting in harm to your business and your bottom line. A knowledgeable trademark attorney can guide you through every step of the registration process to ensure your mark is cleared for use and you avoid potential legal action. Based in Ann Arbor, Michigan, Trademark Lawyer Law Firm, PLLC assists business owners nationwide with a variety of trademark matters. With a track record of over 6,000 trademarks successfully registered with the USPTO, we are committed to providing our clients with high-quality counsel at reasonable rates. Contact us for a complimentary 15-minute consultation today.