A trademark is supposed to provide protection against infringement by a company that misleadingly uses another company’s slogan, logo, or design to confuse consumers about a product’s origin. But it is sometimes the case that a trademark infringement claim is brought in bad faith by a plaintiff who either misunderstands the law or who is trying to make a quick buck. When this happens, it may be necessary to secure the services of an experienced California intellectual property lawyer who understands IP law and who can offer the best defenses to trademark infringement claims.
To learn more about strong defenses that may be raised in your trademark infringement case, keep reading this blog.
What Defenses Are Available in a Trademark Dispute?
A trademark dispute often arises when one company is accused of interfering with another company’s branding and marketing strategies. If you received notice that your company has infringed on someone else’s trademark, a knowledgeable Los Angeles trademark lawyer can help you explore your best options for contesting the claim.
Some of the most common trademark defenses include the following:
- Non-Infringement: When a person or company sells or markets a product, good, or service that has a similar name, logo, or design to another product in the marketplace, it may constitute a violation of the other party’s exclusive trademark rights. If the other party has a registered trademark with the U.S. Patent and Trademark Office (USPTO), that party may then seek to bring an end to the unauthorized use of the trademark by filing a lawsuit. But if the goods or services in dispute are not similar in such a way that they are likely to confuse the average consumer, then you may be able to defend yourself against a trademark infringement claim by asserting that there was no infringement at all.
- Fair Use: If a competitor’s use of the mark is likely to cause confusion among consumers, then it could constitute trademark infringement. But there are still limits on exactly what kind of words or designs can be trademarked, and the trademark fair use defense establishes one of those limits. The more generalized or broad a particular use is, the less likely a court is to enforce the trademark. For example, a fruit company with a symbol or design incorporating a red apple may not be able to enforce its trademark, whereas a computer company logo incorporating a multi-colored apple with a piece missing from the side might constitute a violation of Apple’s trademark rights because it is likely to cause confusion between the brands. In other words, any use of a word or symbol that matches that word or symbol’s plain meaning may constitute a fair use, while other uses may not constitute a fair use.
- Prior Use: “Prior use” is exactly what it sounds like. Basically, if you can show that you were using the trademark before the other party, then any subsequent use by them would be an infringement on your trademark rights. Since trademark rights are established by actual use, it won’t necessarily matter whether the other party had already registered their trademark.
- Different Markets: Even if a particular product is only sold in one state, the product’s trademark is protected in every state across the country. If the products are sold exclusively in certain markets, however, then brand confusion may be unlikely, and the company might find it difficult to enforce the trademark in the other market.
- Abandonment: Sometimes, the fact that a trademark was registered isn’t enough to protect it against use by another company. For example, if the trademark registrant has failed to use the trademark for a period of at least three (3) years, this may be considered “abandonment” of the trademark rights. That’s because trademark rights can only be enforced when the trademark is being actively used, and it won’t matter if the abandonment was unintentional. Additionally, a trademark registrant must also vigorously enforce their trademark or risk losing their trademark rights. (Along those same lines, if you are a trademark owner and you wish to protect your rights, you may need to file a trademark renewal application with the USPTO every 10 years.)
Contact the Los Angeles Trademark Lawyers at Tauler Smith LLP
If you’ve been served notice of a trademark violation lawsuit, the skilled Los Angeles trademark attorneys at Tauler Smith LLP can help you raise effective defenses against the infringement claim. Depending on the circumstances, it may be possible to avoid costly legal action by getting the case dismissed early in your favor, or by reaching an agreement with the plaintiff to drop their claim.