In its most basic sense, trademark infringement, misappropriation, and related misconduct constitute theft. You would not tolerate an entity stealing any other asset from your business, and it is just as important to take prompt legal action regarding unauthorized use of your trademark rights. In the alternative, the situation could be reversed. Your company could be accused of infringement, in which case it is equally critical to defend the allegations. Regardless of which side you are on, these cases are extremely complex and require knowledge in numerous legal areas.
Trademark infringement is the unauthorized use of a trademark on or in connection with goods/services and in a manner that is likely to cause confusion, deception, or mistake regarding the source of the goods/services. Remember, the U.S. Trademark Act is a consumer protection act so confusion of the customer is the inquiry of trademark conflicts.
A trademark holder has the responsibility to seek enforcement when another entity engages in misconduct. It may be possible to address misconduct through a settlement agreement, but many disputes turn into trademark litigation. Trademark disputes may be litigated in the United States Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal Board (TTAB) or in a federal court with jurisdiction.
The Opposition Proceeding
Prosecution of an application in the USPTO essentially ends with publication in the Official Gazette. Publication in the Official Gazette offers the public the opportunity to learn of the imminent registration of marks which may conflict with another’s mark or common usage. Any person who believes that he or she would be damaged by the registration of mark on the Principal Register may oppose registration. In other words, an opposition is proceeding in which one party is seeking to prevent registration of another party’s trademark.
State or Federal Court Litigation
A trademark owner can bring a civil action in either state or federal court for trademark infringement. Most times, trademark owners choose to litigate in federal court. If a trademark owner can prove trademark infringement, available remedies may include:
- A court order or injunction that the defendant stopped using the accused mark;
- An order requiring the destruction or forfeiture of infringing articles;
- Monetary relief, including defendant’s profits, any damages sustained by the plaintiff, and the cost of the action; and
- An order that the defendant, in certain cases, pay the plaintiff’s attorneys fees.
\When conflicts do arise, MAVEN® IP can assist you with the process regardless of the forum — we represent clients in state and federal courts and before administrative bodies, like the United States Patent and Trademark Office’s Trademark Trial and Appeal Board, or before a Uniform Domain Name Dispute Resolution arbitration panel. We have litigated cases involving copyrights, trademarks, and domain names.
MAVEN® IP is also available to assist with your litigation matters internationally through our network of foreign counsel. Working closely with leading intellectual property firms abroad, we represent clients in court and administrative proceedings in numerous foreign countries.
The MAVEN® Trademark Dispute Services Include: