If you are a business owner, understanding trademarks and trademark infringement can be extremely helpful. Trademarks are words or symbols that represent a product or company. U.S. federal law protects trademarks as a type of intellectual property. Business owners who control the goods or services connected to the trademark are the trademark owner.
Trademark owners can enforce their right to exclusive intellectual property rights to their property. Trademark infringement is the unauthorized use of a service mark or trademark. What should a trademark owner do if she or he realizes that someone is infringing upon his or her trademark?
What Constitutes Trademark Infringement?
In order to prove trademark infringement, the trademark owner must prove the following:
- The defendant used the trademark or service mark
- The defendant did not have permission to use the trademark
- The use was in connection with goods or services
- The use was in a manner that is likely to cause confusion, mistake, or deception about the source of the goods or services
Where Should I File My Trademark Infringement Lawsuit?
When a trademark owner suspects that someone has infringed their trademark, they have a right to file a civil lawsuit in state court or federal court for trademark infringement. In many cases, filing in federal court is advantageous. Even if a defendant chooses to file a trademark infringement claim in state court, he or she can ask the judge to remove the case to federal court.
Infringement of Unregistered Trademarks
A trademark owner has the option to register his or her trademark with the U.S. Patent and Trademark Office. However, a trademark owner does not need to register his or her trademark to have the right to legally protect the trademark. An unregistered trademark only confers legal rights to its owner within the geographic area in which the owner operates. Unregistered trademarks are often called “common law” trademarks as they are protected by state laws that regulate unfair competition in the business world.
If you are a trademark owner who has an unregistered trademark, registering it might be advantageous, especially if you are concerned about infringement. Owners of unregistered trademarks that are aware of trademark infringement may be able to file a lawsuit in state court if the offender is using the trademark in their geographical area. AtAU LLC, our attorneys have extensive experience protecting the rights of unregistered trademarks.
Who Owns the Trademark in Question?
In order to file a successful claim for trademark infringement, the trademark owner must be able to prove that he or she owns the trademark. The trademark owner must be controlling the trademark. In order to own the trademark in question, the owner must control the quality of goods and the nature of services used in connection with the brand, services, or products offered. The following people and organizations can own a trademark:
- Limited liability companies
- Individuals
- Partnerships
- Corporations
- Sole proprietorships
- Trusts
- Estates
The trademark owner must be in control of the trademark in order to bring a claim for trademark infringement. For example, a trademark registration might not be valid if the trademark owner is not the one controlling the nature and quality of the services or good connected to the trademark.
Only the Legal Owner Has a Right to Enforce the Trademark
In some instances, a business owner will register a trademark on behalf of his or her company in his personal name. Doing so can make it impossible for the company to enforce its intellectual property rights for the trademark. The trademark registration is also in danger of invalidation since only the person who controls the products or services has a right to register the trademark. It is essential that the owner of the trademark is the one who files for trademark registration.
Can Licensees Use Trademarks Without Infringement?
Yes, U.S. law recognizes that the use of a trademark by a “related” company or licensee may not be an infringement. When a group of affiliated business entities uses a trademark one company will own all of the trademarks used by subsidiaries or affiliates. These affiliates can use the trademarks as long as they do not do so in a way that deceives the public.
In order for a related use of a trademark to not constitute trademark infringement, the related company must use the mark for the same goods or services that the trademark application identified. Business owners who are considering joining another company or forming another type of business should consult with a skilled trademark attorney. Creating licensee agreements between the owner of the trademark and other businesses or individuals using the mark could be advantageous.
What Remedies are Available for Trademark Infringement
Remedies available for trademark infringement can include any of the following:
- A court order or injunction that prevents the defendant from continuing to use the trademark in question
- A court order requiring the defendant to destroy or forfeiture the infringing trademark use
- Monetary relief that can include defendant’s profits from the trademark infringement
- Monetary relief for damages the trademark owner sustained
- Monetary damages for the cost of bringing forth the civil personal injury lawsuit
- A court order requiring the defendant to pay for the plaintiff’s attorneys’ fees
Trademark Infringement of Jointly Owned Trademarks
U.S. trademark law recognizes joint ownership of trademarks. Most people choose to create a single business entity. The entity will then own the trademark. Case law has failed to settle several important issues regarding the jointly-owned trademark. For example, it is unclear as to whether one co-owner of the trademark can license a trademark without the other co-owner’s consent.
Our Chicago Trademark Infringement Attorneys can Help
Whatever your trademark infringement concern, the attorneys atAU LLC can help. We have extensive experience litigating trademark infringement cases in the United States District Court for the Northern District of Illinois. Contact our Chicago trademark law firm today to learn how we can help you create a strategy for fighting against trademark infringement.