Trademarks

Once they have established their trademarks, owners have the duty to guard against infringement

A sample trademark/service mark application

and to be vigilant to preserve and protect their rights. The Lanham Act aids owners in protecting their rights and protects consumers from being tricked or confused by misleading marks.

The six most common causes of action in infringement lawsuits charge that a defendant has infringed on a plaintiff's registered trademark; undermined a plaintiff's unregistered mark in a manner that affects commerce; violated common-law trademark infringement standards and UNFAIR COMPETITION principles; violated state deceptive trade practice laws; diluted a plaintiff's trademark; and misappropriated a plaintiff's mark.

Trademark infringement claims generally involve the issues of likelihood of confusion, counterfeit marks, and dilution of marks. Likelihood of confusion occurs in situations where consumers are likely to be confused or misled about marks being used by two parties. To constitute infringement, this confusion must be probable, not merely possible. The complaining party must show that because of the similar marks, many consumers are likely to be confused or misled about the source of the products that bear these marks.

In a likelihood of confusion CAUSE OF ACTION, the defendant can defend on the basis that confusion is not likely or that although confusion may be likely, the plaintiff has behaved improperly regarding the mark or the mark is somehow defective.

The Lanham Act defines a counterfeit mark as being "identical with, or substantially indistinguishable from, a registered mark." All counterfeits are infringements. The product or service bearing the counterfeit mark must be of the same type of product or service bearing the protected mark. The defendant must have knowingly produced or trafficked a counterfeit mark.

Dilution is lessening the individuality or impact of a mark. The usefulness of a trademark depends on its recognizability and individuality. In cases of dilution, the challenged mark does not necessarily have to be used on products in direct competition with the products of the complaining party, nor is it necessary that the mark is causing confusion. The complaining party only needs to show that the strength and impact of the registered mark is somehow lessened by the presence of similar marks. A trademark owner uses its mark as a means of recognition and as a symbol representing its goodwill, and when similar marks flood the marketplace, this message is considered to be diluted. The product or service thus becomes psychologically less identifiable and less distinguishable. Trademark law prohibits this dilution and prevents the infringing party from unfairly profiting from an association with an established name.

To establish an infringement cause of action based on dilution, the plaintiff must initially show that its trademark is genuinely unique. Similar to the standard for confusion, dilution because of defendant's conduct must be likely or probable, rather than merely possible.

The defendant in an infringement case can invoke any of several affirmative defenses. An AFFIRMATIVE DEFENSE is a response that attacks the plaintiff's legal right to bring an action, as opposed to attacking the truth of the claim. The defendant can argue that the plaintiff abandoned the trademark or that the mark is generic. Defendants may claim that they made "fair use" of the mark, in that their purpose for using the mark did not unfairly compete with the plaintiff. Another affirmative defense is that the plaintiff has "unclean hands" from acting in an unfair or deceptive manner. The defendant can charge that the plaintiff engaged in trademark misuse and used the mark in a manner that went against the public policy that allowed the trademark to be granted in the first place. The defendant may charge the plaintiff with fraudulent use of a trademark. The defendant can argue that the plaintiff violated ANTITRUST LAWS, which are designed to protect commerce and trade against unlawful restraints, price fixing, and monopolies. Finally, the defendant can offer the affirmative defense of LACHES, which provides that the party that unreasonably delays in asserting legal rights forfeits them.