When an inventor, business or other entity owns a patent, and that patent is infringed, the patent owner has few alternatives other than patent litigation.
Though many cases are pursued till the desired result is achieved as to infringement lawsuits, patent litigation is usually lengthy, and patent litigation is always very costly!
The plaintiff in patent litigation can be an individual or small business, while the defendant in patent litigation is often a large corporation with virtually unlimited resources. The defendant in patent litigation will aggressively contest every aspect of the patent owner’s claim. It is not enough to have a valid patent and a strong claim when you enter into patent litigation. The case will be won by the side that knows what it is doing, and the side that has the experience, the resolve and the resources to vigorously pursue the litigation to a successful resolution!
What is trademark infringement?
Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.
What will happen if someone sues me for trademark infringement?
A trademark owner who believes its brand is being infringed may file a civil action (i.e., lawsuit) in either state court or federal court, depending on the circumstances for trademark infringement,. However, in most cases, trademark owners choose to sue for infringement in federal court. Even when a plaintiff chooses state court, it may be possible for the defendant to have the case “removed” to federal court.
If the trademark owner is able to prove infringement, available remedies may include as follows:
a court order (injunction) that the defendant stop using the accused trademark;
an order requiring the destruction or forfeiture of infringing articles;
monetary relief, including defendant’s profits, any damages sustained by the plaintiff, and the costs of the action;
an order that the defendant, in certain cases, pay the plaintiffs’ attorney’ fees.
Conversely, a court may find instead that (1) the defendant is not infringing the trademark, (2) a defense bars the plaintiff’s claim(s), or (3) other reasons exist why the trademark owner is not entitled to prevail.
How do I know whether I’m infringing?
To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are “senior” to the defendant’s), and that the defendant’s trademark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties’ marks. When a plaintiff owns a federal trademark registration on the Principal Register, there is a legal presumption of the validity and ownership of the mark as well as of the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. These presumptions may be rebutted in the court proceedings.
Generally, the court will consider evidence addressing various factors to determine whether there is a likelihood of confusion among consumers.
The key factors considered in most cases are the degree of similarity between the marks at issue and whether the parties’ goods and/or services are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source. Other factors that courts typically consider include how and where the parties’ goods or services are advertised, marketed, and sold; the purchasing conditions; the range of prospective purchasers of the goods or services; whether there is any evidence of actual confusion caused by the allegedly infringing mark; the defendant’s intent in adopting its mark; and the strength of the plaintiff’s mark.
The particular factors considered in a likelihood-of-confusion determination, as well as the weighing of those factors, vary from case to case.
And the amount and quality of the evidence involved can have a significant impact on the outcome of an infringement lawsuit.
In addition to claiming likelihood of confusion, a trademark owner may claim trademark “dilution,” asserting that it owns a famous mark and the use of your mark diminishes the strength or value of the trademark owner’s mark by “blurring” the mark’s distinctiveness or “tarnishing” the mark’s image by connecting it to something distasteful or objectionable-even if there is no likelihood of confusion.
An experienced trademark attorney, taking the particular circumstances of your case into consideration, should be able to provide you with an opinion as to the validity and strength of a trademark owner’s claims.