Trademark Infringement

Trademark infringement.  Trademark infringement is the unauthorized use of a trademark or service mark that is likely to cause confusion about the source of the goods or services.  Under federal law, a cause of action for trademark infringement is governed by Section 2(d) of the Trademark Act (15 USC Section 1114).

A trademark owner that believes that its mark is being infringed may bring a cause of action for trademark infringement in U.S. federal court.  If the trademark owner is successful in proving infringement, the remedies available to it may include the following:

  • a court order that the infringer stop uses its mark
  • an order that the infringer destroy its merchandise bearing the infringing mark
  • monetary damages
  • attorney's fees

Trademark infringement test.  The various factors that courts consider in determining whether a likelihood of confusion exists for a finding of infringement include:

  • similarity of the parties' marks
  • similarity of the goods or services
  • similarity of trade channels
  • sophistication of the purchasers
  • strength of the plaintiff's mark
  • evidence of actual confusion
  • the nature and extent of similar third-party mark
  • likelihood of the senior user bridging the gap

Not all of the above factors are inclusive.

Checklist.  If your company is a trademark owner, or has received a cease and desist letter or a complaint for trademark infringement, you may speak with James Hastings to discuss the options available to you to bring or defend your case.

A recent survey of global companies found that trademark infringement is on the rise.   The survey was conducted by Compumark, a leader in trademark research and brand protection solutions.   Despite the fact that 80 percent of the executives polled believe that trademark infringement is a growing problem, only fifty percent admitted to having comprehensive


In business, there are some secrets worth sharing – particularly if they can help maximize profits and mitigate risks.  And while many innovative ideas are not necessarily original, merely bringing oft-neglected ones into the light can do a lot of good for companies that wish to use them to their competitive advantage.  So with this

What’s wrong with trademark litigation today?  Well, in a word, economics.

A national law firm is hired to represent a consumer brand company in a trademark infringement matter and wants to show both the client and the opposing party that it means business.  A flurry of motion practice ensues, aggressive discovery tactics become the norm, and the law firm proudly establishes its very own “war room” to determine what part of the kitchen sink it intends to hurl over the ramparts next. Welcome to Legal Gladiators – Trademark Litigation Edition.

Trademark litigation is an expensive undertaking for trademark owners.  According to a recent survey by the American Intellectual Property Law Association (“AIPLA”), the average legal fees and costs for a case with the amount in controversy under $1 million is $202,000 through the end of discovery and $375,000 through trial.  Coupled with the fact that less than 5% of cases actually proceed to trial, it would seem to make economic sense for trademark attorneys to counsel their clients to consider settlement options as part of an overall trademark dispute strategy.

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As a trademark opposition attorney, I have first-hand knowledge of trademark bullying tactics that are designed to outspend and harass small business trademark applicants into abandoning their trademark application. The practice also spills into federal court actions for trademark infringement, cyberquatting, and other related matters.  This phenonemnon is very real.

As part of the Trademark

I am a trademark opposition lawyer that charges a flat-fee for my services.  Charging one, flat fee for a trademark opposition case is advantageous to my clients for the following reasons:

  • the total cost to the client is fixed and predictable
  • the fee agreement between the client and me is transparent and unambiguous
  • there are

As a trademark lawyer that handles trademark opposition and trademark cancellation cases, I have a simple philosophy in dealing with the business and legal challenges that my clients face as a result of being involved in litigation proceedings before the Trademark Trial and Appeal Board.

1.  Listen to the Client

It is often difficult for

In discussing how a trademark opposition works, it is helpful to go over the basics of what a trademark opposition is, and what to expect as the case proceeds.

A trademark opposition is when one party elects to oppose the existing trademark application of another party due to one of several grounds, such as the

What comes first?  A trademark registration or use of the trademark in commerce by the owner who is seeking registration?  In other words, can one obtain a federal trademark registration without first using the mark in commerce?  The answer is no!

Trademark use is always a prerequisite to registration in the United States Patent and