Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.
This Brian Hall, a trademark attorney with Traverse Legal, PLC, a law firm that represents trademark owners and those looking to establish trademark rights throughout the United States. Today, I will be answering the question: “How to avoid trademark infringement?”
Oftentimes, clients and prospective clients alike contact me and ask what they need to do in order to make sure that they will not be sued for trademark infringement, and I always give the same answer, which is start with a trademark availability assessment, sometimes known as a trademark clearance.
A trademark availability search is essentially where a trademark lawyer goes out and sees what trademarks are registered and what trademarks are used under common law, and how that may affect the particular mark you intend to use. It is important to recognize that I use the language “intend to use” because the importance of a trademark availability assessment or clearance is really the most valuable before you have started using a mark. It is at that point that a trademark attorney can advise you whether or not you do face risk by using the mark. However, in the event that you have already started using the mark or already applied for a trademark registration with a United States Patent and Trademark Office application, the advice may be different. However, it is better to know after your use began but before you receive a trademark infringement lawsuit or a threat letter from an alleged trademark owner.
So, to recap, the best thing for you to do before you make use of a mark or before you expend significant resources into a particular trademark, service mark or brand, is to contact a trademark attorney and have them provide you with an analysis as to whether or not your mark will create a risk of trademark infringement for you, and in doing so, the trademark attorney will analyze what other marks are out there, either registered or in use, and whether or not your intended use creates what’s known as a likelihood of confusion.
The likelihood of confusion test determines whether or not trademark infringement has occurred under the Lanham Act or other comparable state laws. In the likelihood of confusion test, the test looks at several nonexclusive factors, but the most important ones are the similarity of the goods and services and the similarity of the marks, and this makes sense. If your particular mark is very similar to another mark that’s already in use, that similarity could create consumer confusion. More importantly, it’s how similar the goods or services are that are used in connection with that particular mark. The common example is Delta. Someone can have exclusive rights to use Delta in connection with certain goods or services. There is Delta the airline, there is Delta, the faucet manufacturer, and there is Delta the insurance company. Since it is very unlikely that consumers would be confused as to the source or origin of those distinct goods and services, there is no trademark infringement. However, where someone uses a mark that is similar to another mark in connection with similar goods or services, it is more likely that confusion among consumers may occur, and in those instances, trademark infringement is a significant risk and one that may subject you to many, many legal problems. Some of which include, a lawsuit that entitles the trademark owner to damages up to $2 million per counterfeit or willful infringement and/or injunctive relief in order to stop you from continuing to use the mark.
So, ideally, before you invest in a new brand, have a trademark attorney perform a trademark availability assessment or trademark clearance analysis for you. In the event that you have already started using a mark and have concerns whether or not it will subject you to trademark infringement, a trademark attorney can give you those opinions, and also give you ideas as to ways to mitigate your risk of trademark infringement moving forward.
Once again, this has been Brian Hall answering your question: “How to avoid trademark infringement?”
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