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Judge Gavel and Red Trademark Sign

What Happens if a Trademark Is Infringed? 

Martinez Law Office, Inc Aug. 19, 2022

Those in the business world know how important it is to set your goods and services apart from competitors to attract customers and protect your bottom line. This can be done in many ways — through rigorous research and development, smart marketing, excellent customer service — and through legal protections like patents, copyrights, and trademarks. In fact, so far in 2022 alone, the United States Patent and Trademark Office (USPTO) has seen over 220,000 trademark registrations come through.  

While a trademark is a necessary step toward protecting your brand, it doesn’t necessarily guarantee that you won’t have to fight off those attempting to infringe upon it. If you’re concerned about trademark infringement and would like to speak with a business attorney in the Santa Ana, California region, call me today at the Martinez Law Office, Inc. to discuss your options. I’m able to help clients with their business litigation needs throughout Southern California, including Orange, Los Angeles, and San Diego counties. 

Understanding Infringement  

It’s essential to understand that simply holding a trademark can’t stop another individual or business from infringing upon it, but it does provide you with the legal protection to enforce your trademark. Simply put, trademark infringement occurs when someone else uses your trademarked material (usually a brand name, logo, slogan, or design) without your permission on a similar product or service resulting in confusion on the part of the consumer. When this occurs, the trademark holder (the plaintiff) can then file a lawsuit against the defendant to collect damages, and this is almost always done with the help of a trademark attorney

The key to this legal process is understanding the limitations of trademarks. Specifically, a trademark can be registered for a certain product or service only in the business you’re in. For example, if you trademark a logo for a t-shirt clothing line, other people in the same business are prohibited from using it. However, if someone uses the same or similar logo for a lawn care product, they could do so legally, and you would not be able to sue them in court because the two products would not be confused for one another. 

What Evidence Does the Plaintiff

Need to Prove? 

It’s important to have enough evidence supporting your claim when filing a lawsuit like this, and your attorney can help you collect this as well as advise you on the strength of your case.  

First, you must prove ownership of a trademark, and this is typically done by obtaining a certificate of federal registration. Your trademark must be an original design and registered with the correct product category to have a case. If it’s found that your competitor used your intellectual property (or a design similar to it) in a different category of goods and services, you will not be able to file a lawsuit.  

Next, you must produce evidence of misuse. This typically means that another individual or company used the same design as yours or one similar enough that it would create confusion for an average customer. You can do this by bringing examples of the competitor’s advertising or products to compare them to your own. The legal bar here is to show that they sought a “commercial advantage or private financial gain” by using your property. You must also show that this was a willful act, meaning they intentionally used your copyrighted material without your authorization.   

Possible Defenses

Against Trademark Infringement   

Occasionally, a trademark may be infringed upon unintentionally. Or, even if someone is misusing your original design, it may not constitute infringement under the law. One possible defense an individual may have when faced with a lawsuit like this is that they were unaware the design was trademarked.  

Other defenses may be that your trademark registration is fraudulent or that the trademark was abandoned. These two possibilities make it critical that you work with a reputable trademark attorney who can ensure you’ve taken the proper steps toward protecting your property. They may also claim that you gave them permission to use the trademark which would invalidate your claim against them.  

Lastly, they may have a defense if your trademark is descriptive of a product. This happens when a registered trademark is simply words that describe a product that could reasonably be used by another business. In this case, your trademark would be considered “weak”, and it would be difficult to file a suit against someone.  

Trusted Guidance When You Need It Most 

If you’re in the Santa Ana, California, area and have questions about your intellectual property or protecting an existing trademark, reach out to me to schedule a consultation. I started my practice, the Martinez Law Office, Inc., over 20 years ago because I have a passion for helping individuals and businesses navigate the legal hurdles that stand in the way of success. Your business and trademark deserve protection, and I can help you ensure this. Call me today to get started.