What is Infringement?
Our Virginia Business Lawyers frequently get asked as to what precisely constitutes trademark infringement. In order to answer that question, you need to know when something can be trademarked in the first place.
Exclusive Right to Use – Exclusive Right to Prohibit Use
The owner of a mark has the exclusive right to use that mark and the exclusive right to prohibit others from using the mark. This right is created at the moment they use the mark in commerce. Once that use is established, they have at the very least, common law geographic rights. If they then register the mark with the state authorities, they have statewide rights. If they had filed an application with the United States Patent and Trademark office stating a bona fide intent to use the mark in commerce and followed through with that use and acquired a registration, their rights extend back to the time they filed the application (1B application).
Does it have to be Identical
No. If your mark is so similar to the prior user’s mark, and would cause confusion in the mind of a prospective customer as to who produced the goods or services, you have a problem. The federal statute that covers trademark infringement is 15 U.S.C. §§1114-1120. If you commit any of listed actions without the consent of the owner, you have infringed the mark and are susceptible to the various remedies.
Intentional Infringement – Profits and Damages
Did you produce a computer that looks like an Apple Computer and place the Apple logo on it, attempting to pass it off as an actual Apple Computer, or produce a word processing application or just copy the actual Word program and then and market it as a Microsoft Word, word processing system, using the same logos and designs of the actual Word system? That would be counterfeiting and be covered as infringement under the code.
If determined guilty of infringement causing confusion among the public as to the source of origin, you will turn over to the owner all your profits and pay damages (attorney’s fees, costs to collect and destroy infringing goods, etc). see 15 U.S.C. Sec. 1117 Recovery for violation of rights (United States Code (2018 Edition)) ((1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action)).
Treble Damages – If you intentionally used the mark to cause confusion you will pay treble damages.
Statutory Damages – If the infringement was counterfeiting, the law provides for $1,000 per infringing goods or up to $200,000 per infringing good. If the court. If the Court finds the use was willful, it can be up to $2,000,000.00 per counterfeit mark. (15 U.S.C. Sec. 1117 (c) Recovery for violation of rights (United States Code (2018 Edition)) ((1) not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just; or (2) if the court finds that the use of the counterfeit mark was willful, not more than $2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just).
Publishers – Domain Registrars – Search Engines.
Publishers of magazines newspapers are subject to injunctions to stop the use, as are domain registrars. However, limitations on search engines are carefully analyzed on a case by case basis to avoid undue restrictions on the internet. As an example, the case of Mary Kay v. Weber showed that while the alleged infringer Weber, could not use the trademark Mary Kay in ways to cause confusion as to the relationship between defendant and plaintiff, the restrictions placed on the defendant’s search terms were not so stringent as to remove any right to use the mark.
Innocent Infringement
The remedies differ on the level of knowledge, the intent of the infringer and exactly how you participated in the infringement. If you had conducted a professional third party search before using the mark in commerce, while you will have to stop using the mark, and turn over any infringing product, you may be able to avoid triple damages.
Examples of Innocent Infringement: Bam Burger
This is a mark found on the USPTO, TESS system, serial number 88029664. It is not yet registered because the examining attorney has determined that there is a currently registered mark “BAM!” for frozen pre-packaged entrees and sauces. Further, the word “Burger” was challenged by the examining attorney because it was merely descriptive of the product, i.e., not unique or capable of distinguishing applicant’s goods from others.
Let’s presume that the applicant had done a thorough search of the trademark and while he discovered the existing BAM!, honestly believed that the public would not be confused as to source of origin. In that case, if an infringement action resulted, its possible that the court could find that the intent was not intentional and Bam Burger, while being disqualified from registration and found to infringe upon Bam!, would not necessarily be subject to the harsh triple damages remedies but only for any profits and plaintiff’s damages including attorneys fees.
Conclusion
Perform the due diligence. Don’t take chances. If you find there is a Bam! and you want Bam Burger. Don’t. Find a mark that is not close or similar to another person’s mark. Avoid the infringement lawsuit by making good choices.
If you have a Trademark related question that you would like to consult with us about, then please call or email us at ADMIN at moghullaw.com for help. Please note that we do not offer free consults.
