When is trademark infringement a concern?
What is trademark infringement?
The United States Patent and Trademark Office (USPTO) defines trademark infringement as the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services. (See the Trade Mark Act 1994 for details as to what counts as a trademark infringement)
How Does A Party Establish That a Trademark Infringement Occurred?
In a trademark infringement case, a plaintiff must prove that they own a valid mark, that their mark is senior to the defendant’s mark (thereby giving the plaintiff’s mark priority), and that the defendant's mark is likely to cause confusion in the minds of consumers about where or who is the source or sponsorship of the goods or services. If the plaintiff owns a federal trademark registration on the Principal Register for the mark in question, then the plaintiff enjoys a legal presumption of the validity and ownership of the mark. Consequently, the plaintiff will usually have the exclusive right to use the mark nationally on or in connection with the goods or services listed in the registration. However, this legal presumption can rebut in the court proceedings by the defendant if the facts support the defendant’s argument.
When looking at the evidence in the lawsuit, a court will consider factors such as whether the marks are confusingly similar, how and where the parties' goods or services are advertised and sold, the purchasing conditions, the target market for the goods or services, any evidence of actual confusion caused by the allegedly infringing mark, whether the defendant had the intent to adopt the plaintiff’s mark; and the strength of the plaintiff's mark.
Examples of trademark infringement:
1. Confusingly similar brand names: Using a name similar enough to an existing trademark that it could mislead customers about who is providing the products or services.
McBagel’s was forced to change its name after plaintiff (McDonald’s) argued that using “Mc” in the name could mislead consumers into thinking there was a connection between the businesses. McDonald’s Corp. v. McBagel’s Inc. (1986)
Sardarbuksh Coffee & Co (a company formed in India in (2015) was forced to change its name after plaintiff (Starbucks) argued that its name could mislead consumers into thinking there was a connection between the businesses. The company was ordered to change the name of the business to Sardarji-Bakhsh Coffee & Co. Starbucks Corporation vs. Sardarbuksh Coffee & Co. CS (COMM) 1007/2018.
2. Brand dilution: This occurs when a newer mark weakens a famous trademark’s distinctiveness or reputation, even without causing customer confusion about the source of a product or service.
Victor’s Little Secret (a small clothing store) was sued for trademark infringement and requested to change its name after plaintiff (Victoria’s Secret) argued that using the business name would cause brand dilution. However, the Supreme Court sided with the defendant because plaintiff could not provide actual evidence of dilution. Moseley v. V Secret Catalogue, Inc. (2003)
McSleep (a hotel chain) was sued for trademark infringement and requested to change its name after plaintiff (McDonald’s) argued that use of the “Mc” in their name diluted McDonald’s branding. business name would cause brand dilution. McDonald's won the case, reinforcing its control over the "Mc" prefix in various industries. Quality Inns International, Inc. v. McDonald's Corp., 695 F. Supp. 198 (D. Md. 1988)
3. Logo and design copying: This occurs when a competitor steals or reproduces distinctive visual elements of another brand’s trademark such as specific patterns, symbols, or design arrangements.
Gucci (plaintiff) accused Guess (defendant) of copying several of Gucci’s design elements, such as the square “G” logo, green and red stripes, and interlocking G patterns. Gucci filed a lawsuit domestically and in the Italian courts. A New York court ruled partially in Gucci’s favor and awarded damages. An Italian court rejected Gucci’s claims. Gucci Am., Inc. v. Guess?, Inc., 843 F.Supp.2d 412,102 (U.S.P.Q.2d 1615)
ETV (plaintiff), a Nebraska network, accused NBC (defendant) of copying plaintiff’s logo and design when defendant launched a new network logo in 1976. The designs only differed in color. The defendant settled the case and introduced a different logo. ETV, Inc. v. NBC Universal, Inc., 573 F. Supp. 2d 1087 (C.D. Cal. 2008)
4. Digital brand violations: The use of an existing trademark in digital spaces that suggests false association or authorization. Digital brand violations can come in the form of cybersquatting, counterfeit products, keyword hijacking, social media brand impersonation, and unauthorized sellers on marketplaces.
Microsoft (plaintiff) sued Mike Rowe (defendant), a teenager, for registering the domain “MikeRoweSoft.com” on the basis that it infringed on the plaintiff’s trademark. The case was settled when the defendant agreed to be compensated for transferring the domain to the plaintiff. Microsoft v. MikeRoweSoft (2004)
Beverly Hills Polo Club (plaintiff) sued Amazon (defendant) in a court of law in India for selling counterfeit products under the Beverly Hills Polo Club brand. The court imposed a $39 million find on the defendant. Lifestyle Equities CV & ANR. v. Amazon Technologies, Inc. & ORS 2025 LiveLaw (Del) 237
5. Industry-specific terms: This occurs when a business uses distinctive industry terms or prefixes that have become synonymous with a specific brand through consistent use.
Tiffany & Co. (plaintiff) sued Costco (defendant) for selling engagement rings labeled as “Tiffany.” The appeals court decided the defendant acted in good faith, and it wasn’t likely that customers would think they were actually purchasing a Tiffany & Co. ring at Costco. Tiffany & Co. v. Costco Wholesale Corp., No. 17-2798 (2d Cir. 2020)
3M (plaintiff) sued 3N (defendant and a subsidiary of Changzhou Huawei Advanced material Co Ltd). A Chinese court ruled that despite the dissimilarities in products and pricing, the mark used by the defendant was confusingly similar to the trademark held by the Plaintiff. The Plaintiff was awarded damages.
6. Parody and satire: Parody is legally protected under the First Amendment. However, may constitute trademark infringement if the trademark causes a high likelihood of confusion about the product source.
Vans (plaintiff) filed a lawsuit against the art collective MSCHF (defendant) over its “Wavy Baby” shoes, which parodied Vans’ Old Skool shoe design with exaggerated, distorted features. The court sided with plaintiffs and determined that the shoes could unfairly exploit the plaintiffs’ brand identity. Vans, Inc. v. MSCHF Prod. Studio, Inc., 88 F.4th 125 (2d Cir. 2023)
Major League Baseball (plaintiff) filed a lawsuit against Cardtoons (defendant) over their parody trading cards claiming the trading cards harmed the baseball players images. The defendant sought declaratory judgment and the court found that the potential damage to baseball players’ rights of publicity were outweighed by First Amendment considerations. Cardtoons v. Major League Baseball Players Association, 95 F. 3d 959 (10th Cir. 1996).
How to Avoid Trademark Infringement
You can search the USPTO trademark database for similar trademarks. If you know the application serial number or registration number for the particular mark, you may use the Trademark Status and Document Retrieval (TSDR) system to view/download relevant application and registration records. It is always recommended that you hire a trademark attorney to help you perform trademark searches.
Even if you took all the proper precautions to avoid infringing on someone else’s trademark, there is nothing stopping another party from filing a lawsuit accusing you of trademark infringement. For those reason it will always be a good idea for you to carry business liability insurance.
If you need any assistance with filing a trademark application or any other question we are here to help.