Trademark Infringement Litigation

California Trademark Attorney Resolves Infringement Claims

SKILLED TRIAL LAWYER FOR PLAINTIFFS AND DEFENDANTS THROUGHOUT SAN DIEGO

In a highly competitive marketplace, branding can be even more valuable than the actual product. If your company has worked to establish a trademark that signifies its reputation for quality, you must guard it zealously. Similarly, if yours is an emerging company looking to make a splash, you don’t want to be constrained unnecessarily in your marketing efforts. At The Lunsford Law Firm, I represent plaintiff companies and defendants in disputes over trademark infringement. I have a thorough understanding of California and federal law, and know how to build a compelling case that protects your rights. If you are engaged in a dispute over a registered or unregistered trademark, I have the knowledge and experience to deliver optimal results.

HOW U.S. TRADEMARK LAW PROTECTS YOUR COMMERCIAL RIGHTS

To qualify for legal protection, a trademark must be used in commerce and must be distinctive. There are four categories of distinctiveness:

• Arbitrary/fanciful. These marks bear no logical relationship to the underlying product, but are inherently distinctive and through their use in commerce become indelibly associated with a particular company. Courts determine exclusive rights based only on priority of use.
• Suggestive. These marks evoke or suggest a characteristic of the underlying product. As with arbitrary/fanciful marks, exclusive rights go to the first company to use them in commerce.
• Descriptive. These marks overtly describe a characteristic or quality of the product. To qualify for protection, the mark must acquire a secondary meaning through its use in commerce. The buying public must primarily associate the mark with a particular company rather than a class of products.
• Generic. Because generic marks refer to a general class of products, rather than those coming from a unique source, the law does not protect them. A mark can be judged generic when first proposed or may become generic over time and therefore lose its legal protection.

A trademark need not be registered to have federal or state protection, but registered marks do offer numerous advantages. Registration serves as constructive notice of ownership nationwide, and the ownership may be incontestable after five years of continuous use.

TRADEMARK INFRINGEMENT AND VIABLE DEFENSES

Trademark infringement occurs when a company uses a mark that is similar enough to a protected trademark that the new mark is likely to cause confusion among the consuming public. Courts consider a number of factors, including:

• The strength of the mark. Does the original mark have clear standing in the marketplace?
• The proximity of the goods. Are the goods of the same general type?
• The similarity of the marks. Do the marks appear similar?
• The evidence of actual confusion. Have consumers bought the second product believing it to be the first?
• The similarity of marketing channels used. Are the products sold or distributed in the same manner?
• The degree of caution exercised by the typical purchaser. Is the consumer likely to make a casual purchase, or think twice before buying? The value of the item is a consideration for this factor.
• The defendant’s intent. Did the user of the allegedly infringing mark intend to deceive the public and unfairly take market share from its competitor?

The two major defenses to trademark infringement are fair use and parody. The fair use defense is viable when one company uses another’s descriptive trademark in good faith simply to describe a quality of its product and no consumer confusion results. Parody allows artistic and editorial use of a trademark if the use is not tied directly to commerce.

A defendant can also argue that the plaintiff lost the right to a trademark due to abandonment, improper licensing or assignment, or because the mark has become generic.

DAMAGES AVAILABLE FOR AN INFRINGEMENT CASE

In a successful trademark infringement lawsuit, the plaintiff company could receive a number of remedies, including:

• Defendant’s profits. If the established brand does not show losses, it may still have been damaged by sales that wrongfully went to the infringing brand.
• Damages sustained by the plaintiff. If the plaintiff has lost sales, the court could order the infringing company to compensate for the drop-off.
• Costs of the action. The defendant must pay for the plaintiff’s attorney fees and court costs.
• Injunctive relief. The court shall order the infringing company to discontinue use of the offending trademark.

A court may order treble damages if the plaintiff proves bad faith, such as a deliberate attempt to deceive the public.