Trademarks and Trademark Litigation: How to Protect Your Brand

Conducting availability searches for trademarks before branding your products or adopting a business name could result in the selection of a more protectable mark or name, and could avoid future claims of infringement.

If you are or will become a business person, knowledge of trademark basics will be extremely valuable. A trademark serves three functions. First, it is an indication that all goods identified by the mark come from or are sponsored by the same source. Second, the mark is a guarantee of the uniform quality of the goods it identifies. Third, the mark serves as an advertisement, for without trademarks there could be no advertising. Conducting availability searches for trademarks before branding your products or adopting a business name could result in the selection of a more protectable mark or name, and could avoid future claims of infringement. Understanding that trademarks (i) identify and do not describe, (ii) are proper adjectives not nouns, (iii) must remain distinctive, and (iv) must be properly designated as marks, will assist you in protecting your marks well into the future.


In the United States, one acquires rights in a mark only by use, either actual or constructive. Actual use of trademarks results from placing the mark on the goods, on containers for the goods, on labels affixed to the goods or their containers, on displays associated with the goods, or, in certain circumstances, on documents associated with the goods or their sale. Actual use of service marks results from use of a mark in the sale or advertising of the services. Constructive use results from filing a federal trademark application based on a bona fide intent to use the mark.

One may obtain a federal registration of a mark if the mark is used in the ordinary course of trade, and, if a trademark, the goods identified by the mark are sold or transported in commerce regulated by Congress, or, if a service mark, the services identified by the mark are rendered in such commerce or are rendered in more than one state. If the federal application is filed on a bona fide intent to use, a registration issues only after the mark has been used in commerce. Marks may also be registered in each of the 50 states, and if a mark is not used in interstate commerce, the mark may only be registered in a state where it is actually used. Marks that are in use but that are not registered either federally or in a state are referred to as common law marks. One acquires rights in a mark that is not federally registered only in the geographic areas where the mark is actually used or into which such use is expected to naturally expand.

Federal registration of a trademark provides protection under a federal law known as the Lanham Act. Although federal registration of a trademark is not required, federal registration provides benefits to the owner of a mark and is generally recommended. These benefits include notice to the public that one claims rights to a mark; legal presumption that one owns the mark; exclusive right to use  the mark nationally for the goods or services listed in the registration; and a foundation for registering the mark in foreign countries and preventing the importation of foreign products that infringe upon the mark. Federal registration also grants the right to use the ® symbol, which denotes federal registration of a trademark or service mark. Failure to use the symbol for marks that are registered potentially limits the recovery of damages and profits under 15 U.S.C. § 1111.

State registration confers benefits in accordance with the state’s laws. One may use the “TM” (trademark) or “SM” (service mark) designations to signify a claim of ownership of a mark, but use of such designations confers no legal rights.


Misuse of marks can result in loss of trademark rights. Examples of marks that have lost trademark rights due to misuse are: aspirin, escalator, nylon, yoyo, and linoleum. Abiding by the following rules will help protect your marks from such fate. First, always spell your mark with an initial capital letter or in all capital letters. One can also print a mark in italics or in quotation marks. Second, follow the mark with the common name of the product identified by the mark, i.e., Kleenex® tissues. One may also elect to follow a mark with the word “brand” such as BAND-AID® brand adhesive bandages. Third, use the appropriate symbol with your marks, a ® for federally registered marks and  a TM or an SM for trademarks and service marks that are not federally registered. Fourth, a trademark should never be used as a noun or verb and thus should never be made into a plural, a possessive or a gerund. For example, proper usage would be “Oreo cookies” rather than “Oreos” and making a “Xerox copy” rather than “Xeroxing.” Fifth, do not confuse a mark with a trade name or business name. Although both marks and trade and business names may include or be comprised of the same word(s), trade and business names are nouns; marks are proper adjectives. Finally, if your business does not have a style manual that sets out the way in which the business’s marks should be used and are not to be used, adopt one.


In trademark litigation, the three main claims are trademark infringement, unfair competition and trademark dilution.


If a third party’s trademark infringement, unfair competition or trademark dilution occurs in or affects commerce, the trademark owner may file suit in federal court to recover the damages caused by such misconduct and to obtain injunctive relief precluding future such misconduct. If the misconduct is purely intrastate, such suits must be filed in state courts. 

Alternatively, any owner of a trademark may file suit in state court, where the court may adjudicate trademark rights under federal or state statutory law and the common law.


Trademark infringement occurs when use of a mark by another would likely confuse consumers as to the source of the goods or services. To establish infringement, the owner must show that (1) it owns a valid and legally protectable mark (as previously defined), and (2) the alleged infringer’s use of the mark in commerce causes a likelihood of confusion about the source of goods or services. The primary focus of an infringement claim is “likelihood of confusion.” In deciding whether likelihood of confusion exists, courts typically consider the following factors: (1) the similarity of the marks in sound, meaning and appearance; (2) the proximity of the goods; (3) the strength of the owner’s mark; (4) the similarity of marketing and advertising channels used; (5) how careful the typical consumer is likely to be before making a purchase; (6) evidence of actual confusion; and (7) the alleged infringer’s intent in choosing the mark.

Courts routinely state that all factors are equally important. However, if two marks are not similar in sound, meaning and appearance, one need not reach the other factors. Even identical marks, though, may not be considered confusingly similar if they identify completely unrelated goods and services. An example is Delta® for faucets and Delta® for transportation services. Two of the remaining factors are also treated with greater importance: actual confusion and the alleged infringer’s intent. Evidence of actual confusion is not necessary to prove infringement, but if such evidence exists, it is very difficult to overcome. Additionally, if the marks are similar in sound, meaning and appearance, and the alleged infringer intended to confuse consumers, courts will often find the alleged infringer succeeded in creating a likelihood of confusion. Evidence of actual confusion and the alleged infringer’s intent, while often difficult to find, may include testimony by those adopting an infringing mark and testimony by consumers, business records showing instances of confusion, purchases made by mistake, consumer complaints, and misdirected deliveries or phone calls. In the absence of evidence of actual confusion, trademark owners may use tools such as survey evidence to show that consumers are likely to be confused about the source of a good.


Under federal law, a claim for trademark dilution may only be brought if the mark is “famous.” In evaluating whether a mark is famous, courts consider various factors, including the degree of distinctiveness and the level of recognition in trading areas. Under some state laws, a mark does not need to be famous to bring a dilution claim. Instead, a trademark owner can assert a dilution claim if its mark is distinctive.

Upon meeting the prerequisites for a dilution claim, the owner of a mark can challenge any use of that mark that “dilutes” the mark’s distinctive quality. Dilution may occur through blurring, the weakening of a mark through identification with dissimilar products (e.g., “Kodak” for bicycles weakens the Kodak® mark for the film manufacturer). Dilution may also occur through tarnishment – the casting of an unflattering light on the mark, typically through an affiliation with inferior or unbecoming products.


Successful plaintiffs may obtain injunctions against further trademark infringement, unfair competition or trademark dilution. In infringement, unfair competition and intentional dilution cases, plaintiffs may also be awarded monetary relief including damages, profits and litigation costs. Non-intentional dilution actions, however, are typically limited to injunctive relief.


The most common defenses in trademark infringement, unfair competition and trademark dilution suits include descriptive fair use, nominative fair use, laches, unclean hands and trademark misuse, fraud in obtaining the registration, and application of the First Amendment. Descriptive fair use is the use of a descriptive term to fairly describe a product or service. Nominative fair use is the use of a mark to refer to the actual product identified by a mark, such as newspaper references to entertainment groups and sports teams. Laches is unreasonable delay by the trademark owner in commencing suit. Because equitable relief (injunctions) is the primary relief sought in infringement, unfair competition and dilution actions, courts require trademark owners “to do equity to receive equity.” Improper conduct by the trademark owner can, therefore, be an affirmative defense to suits for infringement, unfair competition and dilution. Intentional deceit by the applicant for a trademark registration constitutes fraud in obtaining a registration and such a finding likely will preclude the trademark owner from obtaining relief. In certain situations, the First Amendment will be balanced against the rights of a trademark owner. This defense provides a lesser degree of protection to commercial speech than noncommercial speech. In applying the First Amendment, courts adopt balancing tests – the most utilized of which holds that a mark used in an expressive work is infringing if it has no artistic relevance to the challenged work, and, if there is artistic relevance, the use of the mark explicitly misleads as to the source of the challenged work.


Competent legal counsel can greatly assist in searching for existing trademarks, registering a trademark, or helping a party assert or defend itself against a claim for trademark infringement, unfair competition or trademark dilution. Experienced counsel can help you navigate the realm of trademark law and ensure you make the best decisions for your business.

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