San Diego Trademark Infringement Attorney
If you are a business owner, you likely own a trademark or two and are probably fairly familiar with trademark law. However, what happens when a third party adopts the same or similar trademark? What happens if you receive a nasty Cease and Desist Letter from a third party claiming that your newly-chosen trademark violates their trademark rights? These are tough questions that we can help you with.
Why Choose Us?
- At T-Rex Law, we know the ins and outs of trademark infringement like the back of our hands. We know that throwing money at a situation isn’t always the way to “win”.
- We are conscious of the time, money, and the emotional toll a trademark infringement dispute can have on a business.
- We consider all facts and circumstances and help guide clients to the solution that will work the best for them – even if that means less money for us.
What are the Basics of Trademark Infringement?
The basic test for trademark infringement is likelihood of confusion. The test examines the differences between the trademarks, the differences between the goods/services, the differences in trade channels, and a number of other factors and determines whether consumers are likely to be confused. In addition to these factors, a trademark claimant must prove prior and superior trademark rights within the United States. The relevant case at the U.S. Patent and Trademark Office is known as du Pont, and examines the following factors:
- The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression;
- The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use;
- The similarity or dissimilarity of established, likely-to-continue trade channels;
- The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing;
- The fame of the prior mark;
- The number and nature of similar marks in use on similar goods;
- The nature and extent of any actual confusion;
- The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion;
- The variety of goods on which a mark is or is not used;
- The market interface between the applicant and the owner of a prior mark;
- The extent to which applicant has a right to exclude others from use of its mark on its goods;
- The extent of potential confusion; and
- Any other established fact probative of the effect of use.
At T-Rex Law, we understand the ins and outs of likelihood of confusion. We understand that the test can be extremely subjective, and we make every effort to make sure clients understand the test, relevant case law, and any other factors to make an informed decision.
What are Typical Trademark Infringement Venues?
There are several stages where trademark infringement can arise and can be discussed or litigated between the parties.
- The first is simply informal correspondence between the parties without involving a governing body. This can take the form of emails between the parties, Cease and Desist Letters, or even sending draft documents ready to be filed with a state or federal court.
- The second is through the Trademark Trial and Appeal Board. All U.S. trademark applications on the Principal Register are Published in the Patent and Trademark Office’s Official Gazette. Publication gives third parties thirty (30) days to Oppose a trademark application if they believe they would be damaged by registration of that trademark. Any registered trademark can also be subjected to Cancellation if certain grounds for cancellation of that trademark registration are present.
- The third is through the U.S. Patent and Trademark Office through various means of prosecution and objecting to pending U.S. trademark applications.
- Fourth and finally, trademark disputes can be heard in state or federal court. State and federal courts have concurrent jurisdiction, meaning either tribunal can hear trademark infringement disputes (although federal courts are often preferred because of judicial economy, federal court judges’ familiarity with the subject matter, etc.).
What are Other Grounds for Trademark Infringement?
In addition to likelihood of confusion, there are numerous other grounds for objecting to use of a trademark that fall within the realm of trademark law. Those grounds include:
- Dilution by blurring;
- Dilution by tarnishment;
- False connection with persons, beliefs, institutions, etc.;
- Passing off;
In addition to the above list, state trademark law generally has additional grounds for supporting trademark infringement claims. Those laws can include claims for likelihood of confusion under state law, as well as unfair competition. California has a very broad statute encompassing unfair competition. Under Section 17200 of the California Business and Professional Code, unfair competition constitutes “any unlawful, unfair or fraudulent business act or practice and unfair, deceptive, untrue or misleading advertising.”
Contact a Trademark Infringement Attorney if San Diego
At T-Rex Law, we can help guide you through these concepts and walk you through your options. We understand that a trademark infringement dispute is the last thing your business needs – so we can not only help guide you through a dispute when it arises, but also help you avoid adoption and use of a trademark that is likely to lead to a dispute. Your consultation with us is free. Call (858) 220-2345 or send us a message.