Remedies for Infringement. If one is improperly using a trademark of another, then the trademark owner may sue for an injunction to stop the infringement. Also, the owner might seek the infringer’s profits and costs of the action even if the infringer was not a willful infringer. For trademark dilution claims, which involve unauthorized commercial uses of famous marks, willfulness must be proved before profits and costs can be awarded. When importation of falsely marked goods is involved, a remedy is stopping the importation. Treble damages, attorney’s fees and seizure of goods and counterfeit marks can be awarded when an unauthorized person knowingly traffics in goods having a counterfeit trademark registered with the Trademark Office on the principal register. Damages are governed by section 35 of the Lanham Act (15 USC 1117(a)). Some Federal Circuit Courts have limited damages under section 1117(a) to situations involving actual consumer confusion for willful infringement.
Is Someone Else’s Use of My Trademark Always an Infringement? No. Unless a famous mark is involved, trademark infringement may not be present if someone is simply using someone else’s trademark for an unrelated good or service in a manner that does not cause consumer confusion, or in a manner that is not likely to cause consumer confusion.
There is no infringement if there is a fair use of a mark, such as in comparative advertising, news reporting or in uses not intended for financial gain. For example, there would be a fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark.
It is important to remember that infringement involves the use of a trademark in connection with the sale, offering for sale, distribution or advertising of goods and services. If commerce is not involved, there is very likely no infringement, although in some areas of the country, liability has been found for “initial interest confusion” of tradename.com uses (see paragraph no. 2, above).
Also, generic marks, e.g. Pawn Shop, are very likely unenforceable as a trademark for a pawn shop, and anyone may use it for a pawn shop without infringement. However, if someone were to use Pawn Shop as a brand name for a sneaker, it is very likely that infringement would lie for any such use on a competing sneaker.
Using a Competitor’s Trademark. If you would like an opinion as to whether or not you can or should use a competitor’s trademark in your company’s advertising, give Attorney Louis Ventre, Jr. a call. You may be surprised to learn that you can use a competitor’s mark, under certain circumstances. Attorney Louis Ventre, Jr. wants to help your business compete effectively, while minimizing liability for Trademark infringement. If you have received a “cease and desist” letter from someone demanding that you stop using their mark and account to them for all profits you may have made in using their mark, contact Attorney Louis Ventre, Jr. as soon as possible and, certainly, before you reply. Contact Attorney Louis Ventre, Jr. for any and all your legal requirements under trademark law.