Trademark Litigation

Trademark infringement litigation is a complex topic. At Sparkman + Foote, our attorneys understand complex trademark issues, and are here to assist you in any aspect of a trademark infringement dispute.

Here is a brief overview of the answers to some common trademark questions—including what trademarks are, when they receive and deserve protection, and how courts and statutes provide that protection.

What is a “trademark”?

Courts and statutes often define a “trademark” (or “trade mark”) as a designation (such as a word, name, symbol, or device), used by a person to identify his goods and distinguish those goods from the goods produced by another. A few examples of iconic trademarks include McDonald’s, Toyota, Disney, and IBM. These trademarks are of enormous value to these companies—worth billions of dollars in goodwill.

What’s the difference between a “registered” and an “unregistered” trademark?

Of course, the main difference between the these two types of trademarks is that one has been registered in and with the United States Patent and Trademark Office (USPTO), the state secretary of state office, or (sometimes) both. This registration process often involves researching the USPTO or secretary of state’s databases for similar trademarks, completing the required paperwork appropriately, and returning the application with the necessary fees.

The legal difference between a “registered” and an “unregistered” trademark is the amount of legal protection the registration process provides (if done correctly).

What protections does registering the trademark give?

Registering a trademark often provides the beginning point for protecting the trademark from infringement. That is why registering the trademark is almost always recommended.

In short, registering the trademark usually gives the registrant a number of benefits, including verifiable proof of initial ownership of the trademark and/or a presumption of ownership at trial—an exceptionally important point should trademark litigation ever arise.

Once I register my trademark, is my trademark always protected?

No. Initial registration of the trademark alone does not automatically provide unlimited protections. In many states, as in Texas, rights in a trademark grow out of use (sometimes requiring “bona fide use”) of the mark in commerce, not from mere registration.

Those rights are retained only for as long as the use of the trademark continues, or as long as nonuse of the trademark is properly explained by the correct trademark owner. But like other rights that depend upon use, rights in a trademark may be lost by acquiescence, abandonment, or laches. (Note that each of these ways of “losing” a trademark has its own elements and/or special legal meaning.)

If lost, a trademark can be “cancelled” by a court—even if the trademark was properly registered. (In certain circumstances, a trademark may also be cancelled under Texas law if the registration was obtained fraudulently or if the registration should never have been accepted.)

What is the difference between trademark use and trademark infringement?

Trademark use occurs when the proper owner of the trademark licenses the trademark to another. (In general, a trademark license is an agreement that permits the owner/licensor to contractually allow another to use the trademark—often for a fee; it does not transfer title to the trademark.)

Critically, though, once the license ends or expires, the licensee’s continued use, duplication, or manipulation of the trademark constitutes infringement—not “use.”

Of course, any use, duplication, or manipulation of a trademark without the owner’s consent also generally constitutes trademark infringement.

What laws govern claims of trademark infringement?

Often a person can sue—or be sued—under at least three different laws for trademark infringement: State statutory law, state “common law,” and federal statutory law.

(Note that because these options provide or require different remedies, different deadlines, different defenses, different jury pools, different costs, and different procedural hurdles, it is a good idea to talk with an experienced trademark litigation attorney to work through which option(s) may work best for your particular case.)

How do I prove “trademark infringement”?

Trademark infringement must be proven according to the governing law the plaintiff sued under. The Lanham Act generally mandates that one is civilly liable for damages if that person—in connection with any goods or services—uses a word or symbol that either:

  • (a) “is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person,” or
  • (b) “in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities.”

See 15 USC § 1125(a).

In brief, a person suing under the Lanham Act for trademark infringement must generally prove that: (1) it owns and uses the trademarks at issue; (2) the defendant used the same or similar marks without the owner’s permission; and (3) the defendant’s use of the plaintiff’s marks likely confused consumers—thereby causing the plaintiff harm (e.g., lost sales).

How do I prove that consumers are or will be “confused”?

Under the Lanham Act, a plaintiff must establish at least a likelihood of confusion—not necessarily actual confusion. This focus stems from the courts’ belief that trademark laws essentially exist to protect consumers—not necessarily the trademarks or their owners.

Courts have looked to a number of factors to determine whether a likelihood of confusion exists, including:

  • the so-called “strength” of the plaintiff’s trademark (see below);
  • the similarity of design between the trademarks;
  • similarity of the underlying products;
  • identity of retail outlets and purchasers of the trademarked goods or services;
  • similarity of advertising media used by the parties;
  • the defendant’s intent (see below);
  • evidence of any actual confusion by consumers or others; and
  • the degree of care exercised by potential purchasers.

Of course, courts have been quick to point out that the absence or presence of any one factor ordinarily does not fully answer whether there is a likelihood of confusion. In fact, a finding of likelihood of confusion does not even need to be supported (usually) by a majority of the factors.

In determining the likelihood of confusion, what is the “strength” of a trademark?

Courts often begin their analysis of likelihood of confusion by focusing on the so-called “strength” of the trademark.

The “strength” of a trademark is usually, in turn, determined by two factors. First, the trademark falls on a spectrum—from generic, to descriptive, to suggestive, to arbitrary and fanciful. The trademark’s strength increases as it moves away from the generic and descriptive marks towards arbitrary marks. Second, the trademark has standing in the marketplace—from start-up, to established, to public, to global. As its standing in the marketplace moves towards the global reach, the trademark “strengthens.”

In determining the likelihood of confusion, how important is the defendant’s intent?

The defendant’s intent in committing the infringement can be difficult if not impossible to prove.

Thus, while it is a factor to be considered in determining whether there is a likelihood of confusion, courts almost always permit infringement claims to proceed without that proof.

On the other hand, if there is proof that a defendant intended to reap the benefits of the plaintiff’s trademark, then that fact alone may be enough for a plaintiff to establish a likelihood of confusion. In other words, the absence of proof of intent does not defeat an infringement claim, but the existence of proof of intent may be enough to prevail on an infringement claim.


Contact: Christina Saunders, Will Denham