New York City Trademark Infringement Attorney

There are a number of avenues for addressing the unauthorized use of a trademark. Sending a cease and desist letter is a common first step, which in some instances, may result in negotiation of settlement terms and a resolution of the matter. Regardless of the strategy, the first step in any case is to analyze the facts and to determine the strengths and weaknesses of your trademark infringement claim.

What is Trademark Infringement?

Trademark infringement is the unauthorized use of a trademark or a service mark on or in connection with goods or services in a manner that is likely to cause confusion as to the source of the goods or services.

Establishing a Trademark Infringement Claim

United States trademark laws provide trademark owners with the exclusive right to use their trademarks in relation to certain goods or services. When a third party uses an identical or similar mark, a trademark owner may have a valid claim for trademark infringement.

To establish a claim for trademark infringement the trademark owner must demonstrate that it owns a valid and legally protectable mark and the defendant engaged in unauthorized use of a mark in commerce in a manner that is likely to cause confusion as to the source, sponsorship, affiliation, or approval of the goods or services.

A federally registered trademark is not required in order to bring a claim for trademark infringement although it provides broader protections to the trademark owner. Trademark infringement claims may be brought based on unregistered trademark rights, also known as common law trademark rights. Where a trademark infringement claim is based on common law trademark rights, the trademark owner has a higher burden of showing existence of a valid and legally protectable trademark, and any acquired rights are generally limited to the geographic locations in which the goods or services are sold.

What is Likelihood of Confusion?

Likelihood of confusion exists between trademarks when the marks are so similar, and the goods or services with which they are used are so related, that consumers would mistakenly believe they come from the same source. There is no strict test for determining likelihood of confusion. However, New York federal courts look to the following Polaroid factors in determining whether a likelihood of confusion exists:

(1) strength of the trademark;
(2) similarity of the marks;
(3) proximity of the products and their competitiveness with one another;
(4) evidence that the senior user may “bridge the gap” by developing a product for sale in the market of the alleged infringer’s product;
(5) evidence of actual consumer confusion;
(6) evidence that the imitative mark was adopted in bad faith;
(7) respective quality of the products; and
(8) sophistication of consumers in the relevant market.

Trademark Infringement Versus Trademark Dilution

Unlike trademark infringement, trademark dilution does not require a showing of likelihood of confusion between the marks. Instead, the mark owner only needs that their "famous" mark is used by a third party in a manner that causes dilution of the quality and distinctiveness of the mark.

The two types of dilution in the US are dilution by blurring and dilution by tarnishment. Dilution by blurring occurs when the unauthorized use of the famous mark impairs the distinctiveness of the famous mark. Dilution by tarnishment occurs when unauthorized use of a famous mark is offensive or unsavory, harming the reputation of the famous mark.

Identifying Trademark Dilution
A successful dilution claim requires showing that the mark is famous. Courts look at a number of factors in determining whether a mark is famous, including:

The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties
The amount, volume, and geographic extent of sales of goods or services offered under the mark
The extent of actual recognition of the mark, and
Whether and for how long the mark was registered on the Principal Register.

Remedies for Trademark Infringement Claims

A successful plaintiff in a trademark infringement action may be awarded both monetary and injunctive relief. They may be awarded damages for their losses as well as the infringer’s profits in connection with the infringement. Attorney’s fees and costs may be awarded in exceptional cases. Treble damages may also be available when appropriate.

How a NYC Trademark Infringement Attorney Can Help

Not all unauthorized uses of a trademark provide a trademark owner with an actionable trademark infringement claim. An experienced trademark litigation attorney can advise on the strengths and weaknesses of any claims and assist in developing an enforcement or defense strategy.

Consult a Trademark Infringement Attorney at Grant Attorneys at Law PLLC

Intellectual property litigation can be complex and challenging, requiring specialized knowledge and experience in both intellectual property law and federal and state rules.

Working with an experienced team of attorneys who can guide you through the process and advocate for your rights during an Intellectual property litigation matter is the first step toward success.

Book a meeting with one of our trademark litigation attorneys to discuss your infringement matter.

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