A business’ brand and reputation are its heart and soul. They must be protected just as trade secrets must be protected.
One tool to help a business protect its brand and guard against unfair competition is to obtain trademark protection.
Right after World War II, Congress passed the Lanham Act, creating a national registry for trademarks and setting standards for relief of trademark infringement.
A trademark is not just a company logo. In addition to the logo, it can be any word, name, symbol or device or combination used — or intended to be used — in commerce, to identify and distinguish one’s goods or services from others. When a business registers a trademark with the U.S. Patent and Trademark Office, this serves as evidence of the person or business’ exclusive right to use the registered mark.
Registration is not enough to protect the brand. It is important for a business to monitor use of its trademark by others in the marketplace, most commonly on the Internet. In this way, a business can be aware of whether another entity is infringing on its trademark, or whether it is unintentionally infringing upon another’s business mark.
When a business discovers infringement, it makes sense to first send a cease-and-desist letter asking that the infringer discontinue the use of the trademark. In some cases, such a letter can facilitate an amicable resolution. It may have been an unwitting infringement.
Nevertheless, sometimes the parties will not be able to agree on a resolution, either because they do not recognize the other’s claim to exclusive right to the mark, or even that an infringement exists in the first place. To establish a claim for trademark infringement, a plaintiff must show:
- It has a valid and legally protectable mark.
- It owns the mark.
- The defendant’s use of the mark in commerce to identify its goods or services likely causes confusion.
Whether confusion exists is the most commonly disputed issue in infringement cases. In assessing confusion, courts will consider a number of factors, including the similarity of the marks, the competitive proximity of the products in the marketplace and evidence of actual confusion.
A business defending against claims of trademark infringement may raise a number defenses, including:
- The mark is not subject to protection under federal law.
- There is no actionable confusion.
- Trademark registration was fraudulently obtained.
- Plaintiff abandoned the mark or otherwise gave the defendant permission to use it.
It is commonplace to seek injunctive relief prohibiting any further infringing use of a trademark.
The law also provides for recovery of several types of damages by a prevailing plaintiff: (1) actual damages, (2) disgorgement of the infringer’s profits and (3) attorney’s fees and costs. Actual damages usually involve claims for lost profits that the plaintiff would have earned “but for” the defendant’s infringement, or a loss of good will that can be assessed by valuation of the trademark before and after the infringement. If the infringing business has benefited from use of a trademark, it can be ordered to pay back all profits it realized from the infringement.
As for attorney’s fees, the Lanham Act provides for recovery only in exceptional cases, usually involving bad faith and/or willful infringement by the defendant. By including a claim under the Connecticut Unfair Trade Practices Act, it becomes possible to recover attorney’s fees without having to prove exceptional circumstances given that a trademark infringement will also constitute a violation of CUTPA, which provides attorney’s fees to the prevailing party.
Whether protecting against a violation of its trademark, or defending against an attack to its brand, diligence by a business can ensure unencumbered use of its trademarks — the very essence of what makes its products and services valuable and desirable to the public.
Attorney David A. Slossberg leads the business litigation practice at Hurwitz, Sagarin, Slossberg & Knuff. He is an editor of the definitive treatise on unfair trade practices in Connecticut. He can be reached at [email protected].