Trademark Infringement

Trademark infringement can be prosecuted under both a federal act and state common law.   The Lanham Act is the federal law that protects trademarks. A trademark doesn’t need to be registered with the U.S. Patent and Trademark Office (USPTO) to have legal protection. However, it will have stronger and broader legal protection if it does.

It’s also important to note that trademarks, registered or unregistered, have territorial limitations. Therefore, even if a trademark is registered with the USPTO, that offers no protection against infringement outside the United States. Similarly, anyone relying on state common law protection can’t use that protection against acts done outside that state.

Elements of Trademark Infringement

Generally, an owner of a trademark has the exclusive right to use that trademark in the specified area. Infringement can occur if someone else uses the exact trademark or one that is confusingly similar.

The specific elements one must prove to show trademark infringement are:

The complainant owns the trademark.
The trademark is a valid and legally protected one.
Another party is using the trademark for commerce in a way that is likely to cause confusion.

If a trademark is registered, the first two elements are easily resolved. They become larger issues when the trademark isn’t registered. However, in every case, the issue of whether the defendant is using the trademark in a way likely to cause confusion requires investigation.

The same mark can be used for products that are entirely unrelated. If someone wanted to name a perfume “IBM,” they may be able to do that because there’s very little likelihood it will be confused with the computer manufacturer. When determining if there is a likelihood of confusion, the courts typically look at the following criteria:

  • The strength of the trademark.
  • Even if a mark is trademarked, it might not have enough recognition to prohibit another party from using it or something similar.
  • The proximity of the commercial activity.

While a trademark does cover a specific geographic area, the competing parties may still operate sufficiently far apart that confusion is unlikely. For example, a company in Chicago and a company downstate may not be in such proximity that their concurrent use of a similar mark would cause confusion.

  • The similarity of the marks.
  • If there is evidence of actual confusion.
  • The marketing channels used by both parties.
  • The degree of caution the typical buyer of these products uses.

If the product is of the type that usually requires a longer sales process and more investigation by a buyer, such as the sale of a car, then there is an expectation that buyers will recognize the difference between similar marks.
The defendant’s intent.

  • A company can’t trying to ride the marketing efforts of a popular trademark by intentionally using a confusingly similar mark.


Successful complainants can prevent the party sued from using the mark in question. They can also seek to take any profits the defendant earned as a result of using the mark paid to them. This would be above any compensatory damages they could show.