This post is the second part of a series on Intellectual Property Law with Abe Cohen, Esq. The first part focused on questions such as: What is a trademark? What kind of businesses needs trademarks? What is the trademark process?
This post focuses on trademark rights and infringement. How can businesses identify infringement? What can businesses do about it?
Abe Cohn, Esq. is managing partner of Cohn Legal, PLLC, Head of the firm’s Intellectual Property and Transactional Group, and works in Manhattan. He has spent an extensive amount of time in Israel, s Hebrew fluently, and presently has clients in the greater Tel Aviv area.
How do you know when someone is infringing on your trademark rights?
This is an excellent question. First, it is important to briefly recap what a trademark is and the extent to which it provides proprietary rights to the owner of the trademark. On the most basic level, a trademark is a branding device, such as a name/logo/slogan which, when used in conjunction with the sale of a particular product or service, identifies the parent-company selling that product or service.
So, when a consumer sees the PRADA logo on a t-shirt, he/she understands that the Prada corporation sells the T-Shirt and consequently expects the t-shirt to be of a certain quality. Now, consider the scenario whereby a new clothing company was to start selling its own t-shirt line under the brand name “PRADDAH.” Of course, this new company’s name is spelled slightly differently than that of the “Prada” company, and yet by all objective measure, it is largely similar in both sound and appearance.
Determining the extent to which it is too similar, such that its use would be trademark infringement, is a function of the “Likelihood of Confusion” that a consumer would confuse the T-Shirt bearing the PRADDAH symbol as belonging to the Prada Corporation. Thus, based on the similarity of the marks in question and the Goods/Services sold under the banner of the marks, the Likelihood of Confusion is the essence of trademark law.
What can/should a business owner do about it?
The first step, of course, is to consult a trademark attorney and have an objective, grounded discussion analyzing the similarities between the trademarks and products/services sold under the trademarks. Suppose it becomes apparent that an individual or company has infringed on the trademark rights of a business. In that case, the next step is typically to send an aggressive but respectful cease and desist letter to the infringer, articulating the business owner’s trademark rights and an explanation of how those rights are being infringed.
The purpose of this letter to compel the infringing party to terminate his usage of the trademark and possibly, to request monetary compensation for the illicit use of the mark. If the infringing party refuses to stop using the mark, the business owner will then need to decide if it is worth the time and expense to sue the infringer in court. Each case is different, and the answer to this challenge will change according to the individual business owner’s circumstances.
Are there different infringements based on the kind of item (name/logo.slogan) being infringed upon?
Another excellent question. The analysis used to establish an infringement offense will vary according to the type of trademark. For example, in determining whether there is a Likelihood of Confusion with a logo, one must consider the colors, shapes, and design elements in the two competing logos. Of course, this analysis would be irrelevant in a Likelihood of Confusion analysis for two-word trademarks because word marks, by their very nature, do not contain design elements. Similarly, Phrases must be evaluated according to the meaning imparted by the use of the full phrase.
How can a business document these infringements for legal purposes?
A business should strive to leave the analysis of trademark infringement to a trademark attorney. This attorney will draft a legal brief considering all of the relevant issues and provide a conclusory theory of law which will hopefully accurately track the outcome of a prospective trademark infringement lawsuit.
What are the penalties for infringing upon a trademark?
The penalties for trademark infringement will naturally vary according to the case’s specifics; however, should the plaintiff prevail, he may receive monetary damages, lost profits, and a court-ordered injunction for the defendant to stop illegitimately using the trademark.
Are there grey areas?
Unfortunately, Trademark Law is steeped in Grey Areas because of the subjective nature of the Likelihood of Confusion test. , two people might observe the same trademark and reach entirely different conclusions as to whether there is a “Likelihood of Confusion” between the two marks. One person might think that the marks represent different meanings. No reasonable consumer could be confused; the other person might think that both marks are sufficiently similar to cause confusion.
How can businesses avoid infringing on the rights of other companies?
Businesses should strive to conduct a robust and comprehensive trademark search prior to the commencement of the use of a new trademark. Do not invest money and resources on a brand name/logo that a competent trademark attorney has not sufficiently researched in advance.
Is there anything you would like to add?
Following up on the last question, it is worthwhile for a company to spend the time and effort vetting its present and future intellectual property’s legal viability (and prospective vulnerability). The famous adage, ‘An ounce of prevention is worth a pound of cure,’ is entirely correct and eminently relevant.