How to Avoid Trademark Infringement

How to Avoid Trademark Infringement

by Joe Runge, Esq., November 2015

You’ve thought of the perfect name for your classic cartoon blog: Saturday Morning Cereal. You even have a wacky logo—that you paid for—ready for the header. You go to reserve the domain and your heart sinks – is already registered by a restaurant in Portland. Do you delete those wacky logos and the eat cost, or can you still use them with your blog?

What Is Trademark Infringement?

A patent protects an invention. A copyright protects a creative work. What, exactly, does a trademark protect? Intellectual property encourages inventors and authors to share their creative work. It gives creators control over their works for a limited time. In the same way, trademark encourages businesses to invest in their brand by preventing others from using it.

Trademark infringement cases hinge upon the owner of the trademark showing an infringer’s use of the mark causes confusion as the source of goods. Trademark protection gives the business the right to stop others from using the same mark but only when the alleged trademark infringement causes likely confusion about the source of goods.

Trademark infringement cases are expensive because the owner of the trademark must prove that the alleged infringers confuse customers. To get infringement damages, the owner must use data, experts, and research to show confusion is leading to a loss of revenue or the brand’s goodwill.

Revenue is easy to understand but what is goodwill? That legal term refers to how people associate the brand in the marketplace. Imagine cheap knock-offs flooding the marketplace that illegally use a famous fashion designer’s logo; those knock-offs could lead customers to think the brand has declined in quality, even if that isn’t the case at all. This is a loss of goodwill.

Avoid Trademark Infringement

The restaurant’s website is alarmingly slick. They make locally sourced organic breakfast cereal and serve it with raw milk in fancy hotel bowls for $12.95. Who knew that you could make crunchberry purple with beet extract? They may have a lot of cash, and that means they have attorneys. So can you still use the logo or not?

A trademark holder does not own the mark – they own the right to use the mark to sell goods or services. The business invests in generating goodwill with its customers and can use the trademark to protect that investment. Trademark infringement examples are not just the use of a protected trademark, but the use of the protected trademark that would confuse customers.

Domain trademark infringement is no different. Even if you legally register a website, if the name infringes a trademark you are still liable for trademark infringement damages.

In the case of your blog, would anyone confuse the source of goods? Your campy blog looks totally different than the slick cereal restaurant. You are servicing totally different customer bases and even using the phrase in totally different ways. Maybe you can avoid trademark infringement by making your blog look completely different and focus like a laser on cartoon nostalgia and not on sugary cereal.

A Registered Trademark

Like a copyright, you own the rights to use your trademark the moment you slap it on your product. When merchants use the ‘TM’ logo next to their brand it is informing their customers that it is a mark. If you willfully take that mark and duplicate it, you are liable for trademark infringement

When you dig deeper, you find that the Portland restaurant has an R in a circle next to their name. They have registered their trademark with the US Patent and Trademark Office. Registration gives constructive notice worldwide. This means trademark laws assume that everyone worldwide knows or can find out when a trademark is registered. A registered trademark does not require proof that an infringer knew about the trademark to prove infringement. The world is on notice: respect the trademark.

You get nervous. The names are the same, the restaurant took the time to register a website and a trademark. They look like they do a good business and can afford expensive legal fees. As much as you love the logo, you delete it and start over. Even though you think you have a good argument you are not interested in finding out if it would win. You would rather be out the cost of design work than a fortune in legal fees.

Avoiding trademark infringement requires a basic understanding of trademark law, good research and sound judgment. Before starting any new venture, take the time to make sure that you are not getting too close to an existing trademark.

LegalZoom will help you search for registered trademarks, and file your own. Get started today by answering some questions about your mark, your business, and your plans to use the trademark. We can also help you monitor current trademark applications with the USPTO and notify you of potentially infringing applications with our trademark monitoring services.