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What is involved in a trademark infringement claim?

A trademark is a type of intellectual property, and it can be any word, symbol, design, phrase or combination of items that helps the consumer identify goods and services quickly. Typically, manufacturers or business owners use trademarks to represent their goods and use service marks to represent their services. A trademark has many benefits for business owners as it helps them legally protect their brand and guard their products against counterfeit or fraud.

You immediately become the trademark owner when you start using it for your goods and services. However, to own the trademark’s broader rights and legal protection, you must register it with the federal or state government. In California, application for registration of trademarks or service marks is made at the California Secretary of State’s office. Business owners can send their applications either by mail, in-person or online.

Trademark infringement occurs when another person uses a registered trademark to market and sell their goods or services. The similarity of the trademarks may cause confusion and deception to consumers when identifying the source of the products. If this happens, the trademark creator can either send a cease-and-desist letter or file a lawsuit to protect their interest.

What are the elements of a trademark infringement claim?

The plaintiff must provide the following elements to claim a trademark infringement;

  •  A government registered and valid trademark
  • Possession or ownership of the trademark
  •  Demonstrate how the defendant’s trademark use causes a possibility of confusion

Typically, the court will try to determine whether the alleged trademark has the potential to confuse consumers. The main factors it considers include:

  • Strength of the trademark; if the trademark is strong enough and acceptable. A strong trademark quickly identifies the source of products
  • The resemblance of the alleged trademarks
  • Whether the parties are dealing in similar goods and services
  • The intentions of the defendant when using the claimed mark
  • If there have been cases of confusion or deception caused by the alleged trademark
  • The geographical location where the parties are selling or marketing goods or services.

What are the remedies for a trademark infringement claim?

If the trademark holder wins the lawsuit, the court might impose upon the defendant to refrain from using the alleged mark. Monetary relief to the plaintiff for damages as well as payment of attorney fees can also be a remedy for a trademark infringement claim.