How is Trademark Law Different? 

While copyrights and patents protect your creative content and prevent others from profiting off your inventiveness, the purpose of trademarks and trade dress protections are slightly different.  These areas of intellectual property law are focused on brand association and consumer confusion, not necessarily on the creativity that went into designing the mark or the trade dress. Most trademark and trade dress protections derive from the Lanham Act, codified at 15 U.S.C. § 1051, et seq.

Litigating trademark/trade dress infringement cases, therefore, differs significantly from other types of IP litigation.  In order to prevail in a traditional trademark/trade dress infringement case, a plaintiff must show (1) substantial similarity between their own mark/dress and (2) the defendant’s mark/dress, such that it could confuse a typical consumer about the source of the goods in question.  If there is no risk of confusion between, say “McDonald’s,” the restaurant famous the world over for the Big Mac®, and “McDonald and Sons Plumbing,” a small, family-owned business in the trades that operates only in the state of Missouri, both businesses will be able to use “McDonald” in their name, logo, and branding. No reasonable consumer would confuse the two businesses or think their favorite fast-food restaurant had branched out into a field of home maintenance.

What Is the Value of the Mark?

A company’s name, logos, colors, font, product names, and other distinctive trade dress go beyond just identifying the source of goods to potential consumers.  All of these are elements of a company’s brand. They speak to who the company is, what it stands for, and who it wants to connect with.  Brands become an important part of a company’s business goodwill.  A powerful, positive mark will be highly regarded by consumers and potential consumers.  They may view it as a guarantee of quality or innovation, committed customer service, or your business’s reputation for ethical conduct.  Damage to your brand from someone creating an inferior product using a confusingly similar brand or logo can quickly erode goodwill that you spent years building, if not generations.

What Are Companies Protecting Against?

There are three major threats to a business’s goodwill that companies seek to defend against by protecting their marks:

First, companies want to protect their reputation for quality from being damaged by people who would pass off “knockoff” (highly similar products that do not falsely use the company’s mark or dress, but might come close) or “counterfeit” (products that aren’t authentic, but bear the company’s mark or dress without permission) goods as the real thing.

Second, companies seek to protect their marks and their trade dress from “genericide,” which is when their name becomes synonymous with a product type rather than their unique product. For example, granola and aspirin were once unique marks identifying a specific company’s products, but now refer generically to a category of products sold by many different companies.  Xerox (“Xeroxing” a document, rather than copying it), Google (just “Google” it, rather than running an internet search for it), and Kleenex (using a Kleenex to describe generic facial tissues) are examples of companies that have fought extensively to prevent their brands from becoming generic.  When your mark becomes generic, your product risks becoming a commodity, no different or better than any competitor’s products.

Finally, companies want to protect their marks from being tarnished, or the reputational harm from being associated with products, groups, activities, or movements that are unsavory, illegal, unethical, or obscene.  Companies want their products to be associated with products and services their customers view favorably.  Negative connections, even false ones, can harm the brand and the business.

Both blurring and tarnishment constitute “trademark dilution.”  The Federal Trademark Dilution Act of 1995 was passed to allow companies to protect famous marks from dilution, even when there is no risk of consumer confusion.  But the Act does not cover certain conduct, including fair use (including comparative advertising by competitors), noncommercial use, and news reporting and commentary.  The use of a famous mark in these contexts does not constitute dilution.

Impact on Litigation 

Traditional trademark and trade dress law is well suited to address the first of these risks – that posed by knockoffs and counterfeit goods – i.e., scenarios where a consumer could be confused between the knockoff/counterfeit product and the real one.  Because knockoffs and counterfeits thrive on consumer confusion, the owner of the mark can make a strong case that a party usurping the owner’s distinctive mark or dress is creating the confusion the law is designed to prevent.  The harmed parties are the customers. They think they are buying the genuine article, not a cheap copy.  If the counterfeit breaks, turns the user’s skin green, or otherwise fails to perform as expected, the consumer now believes the mark holder is a producer of shoddy goods.  The consumer was in essence, tricked into parting with her money.  The mark owner, whose standing in that customer’s eyes is now diminished (potentially irreparably), is collateral damage under the theory that the purpose of trademark law is to prevent consumer confusion.  In any confusion case, surveys of consumers to determine the risk of confusion are the gold standard of proving your case.

Under the Federal Trademark Dilution Act, which covers both blurring and tarnishment, a plaintiff can obtain an injunction to prevent further diluting use of the mark even where there is no consumer confusion, but can only recover damages if it can prove the defendant willfully sought to “trade on the owner’s reputation or to cause dilution of the mark.”  Under those circumstances, the plaintiff can recover attorneys’ fees, damages, and potentially treble damages.  Numerous states have similar trademark dilution statutes, many of which provide similar remedies.  Protecting one’s mark against dilution requires presenting a strong case on the importance, distinctiveness, and famousness of the mark, the history of its use, and the harm the other party’s conduct is doing to the mark.

Using the Courts to Protect Your Brand

Companies seeking to protect their marks, whether from those who would dilute them or cause consumer confusion, or to defend their brand against false charges of infringement, need counsel who understand both the business value of the mark and the differing laws and theories under which that mark can be protected.  We have successfully defended the holders of world famous and invaluable marks against false claims of infringement.  We bring strategic focus, years of experience, and deep expertise to all of our intellectual property cases, including our trademark and trade dress infringement matters.