Los Angeles Trademark Infringement Attorneys

Experienced Los Angeles Trademark and IP Infringement Lawyers Protect Our Clients’ Brands and Business

A trademark sets your goods and services apart from those of competitors. Your customers rely on your trademark to identify your offerings – and to trust that those offerings meet your business’s quality standards. 

Trademark infringement erodes this trust. Infringing goods steal your customer goodwill and use it to deceive those who want to do business with you. When customers encounter inferior goods or services with your trademark on them, they lose their trust – in you and your business. 

Because trademarks play such a valuable role in commerce, United States trademark law provides several ways for trademark owners to protect their mark. If you’re facing infringement on your trademark, speak to an experienced Los Angeles trademark infringement attorney today. The team at Cohen IP can help. 

What is Trademark Infringement?

The US Patent and Trademark Office (USPTO) defines trademark infringement as “the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.”

This definition has three key parts:

• Unauthorized use. Authorized use of a trademark includes use by the trademark’s owner, as well as use by those to whom the trademark owner permits to use the mark. Use by non-owners without permission is generally unauthorized.
• On or in connection with goods and/or services. To infringe on another’s mark, an infringer must use the trademark on or in connection with goods or services. Placing your trademark logo on a package of a similar product, for instance, is used on a good; using your trademark to sell a service, like lawn care, is an example of using the mark in connection with a service. Use of the mark in other ways, such as on a student worksheet discussing graphic design, is generally not considered a connection with a good or service.
• Likely to cause confusion. Finally, the trademark must be used in a way that is likely to cause consumers to be confused, misled, or deceived about the source of a good or service. This element is most often fulfilled when a trademark appears on a substantially similar product or service – but not the one you offer. 

The specific factors considered in each case vary, depending on the facts of the case. A trademark infringement attorney can explain what issues are likely to arise in your case and how these issues can be addressed. 

How Do I Establish My Rights to a Trademark?

To establish a trademark infringement case in court, the plaintiff (person or company who brings the case) must demonstrate that:

• They own a valid trademark,
• They have priority, meaning their rights in the mark are “senior” to the defendant’s, and
• The defendant’s use of the mark will likely cause confusion among consumers regarding the source of the goods or services offered under the mark. 

Using a mark in a business or commercial setting establishes a right to use the mark – with some limitations. For example, the use of the mark will typically be limited to the type of business, product, or service offered under the trademark, as well as the geographic area in which those offerings are made. For fuller protection, businesses may register their trademark with the USPTO.

Registering a trademark with the USPTO offers several benefits, especially in the face of infringement. These benefits include:

• Creating a legal presumption that the entity who registered the mark is its rightful owner,
• Allowing the registrant to file a trademark infringement lawsuit in federal court,
• Permitting the registrant to seek an injunction in federal court to stop someone else from using your mark anywhere in the United States, and
• Opening opportunities for the trademark owner to license the mark to others, typically for profit. 

The best time to file for trademark registration is when you begin using your trademark in business – before infringement occurs. If you have not registered a trademark but face infringement, however, you may still have legal options. Speak to an experienced trademark and IP infringement lawyer as soon as possible. 

What Happens in a Trademark Infringement Case?

In a trademark infringement claim, the plaintiff typically needs to address the three elements of trademark infringement discussed above. 

Use

No trademark infringement claim can succeed unless the party bringing the claim demonstrates that the alleged infringer is actually using the trademark. Examples of using a trademark include placing that trademark on the packaging for a good or placing the trademark on flyers, billboards, or other advertising for a service. 

Not all situations that occur “in commerce” or create a “likelihood of confusion” actually involve the use of a trademark. Shelving two goods next to one another in a grocery store, for instance, is an example of using items in commerce, and it may confuse customers; since the grocery store is not using either item’s trademark, however, this situation won’t meet the use requirement.

In Commerce

Trademark infringement can only occur when a mark is used “in commerce,” or in connection with a good or service in a manner that affects interstate commerce. Examples of situations in which a trademark is used “in commerce” may include:

• An infringer launches a multistate ad campaign featuring the disputed trademark in connection with its own goods or services.
• An infringing company places the disputed trademark on its goods and then ships those goods across state lines.
• The disputed trademark is used to advertise goods on billboards near interstate highways, on radio or television stations with interstate broadcasting ranges, or online.

A trademark can appear in many contexts that are not used “in commerce.” A child’s drawing of a Nike “swoosh” logo, for instance, may not be officially authorized by Nike, but it is unlikely to be an example of use “in commerce.” 

Likelihood of Confusion

Likelihood of confusion occurs when a consumer who encounters the disputed trademark would assume the product or service comes from a different source than it does. 

Most trademark infringement claims focus heavily on the “likelihood of confusion” element. To start, a court will typically determine whether an allegedly infringing item competes directly with the trademarked item or not. An example of direct competition would be a bottle of Coca-Cola created and sold by the Coca-Cola Company versus a bottle of soda with a similar red and white “Coka-Kola” label.

When two items compete directly, courts will typically find infringement if the two marks are so similar they’ll confuse customers. When two items do not compete at all, courts will typically find that confusion is so unlikely there is no infringement.

When two goods are related but don’t directly compete for sales, a court’s analysis becomes more complex.

Ninth Circuit: Eight Sleekcraft Factors

The Ninth Circuit uses the following eight factors:

• The strength of the mark;
• The proximity of the goods;
• The similarity of the marks;
• Evidence of actual confusion;
• The marketing channels used;
• The type of goods and the degree of care likely to be exercised by the purchaser;
• The defendant’s intent in selecting the mark; and
• The likelihood of expansion of the product lines.

These factors are known as the “Sleekcraft test,” from AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.1979)., the federal case that articulated them. 

Determining how to address infringement arguments can be complex, and it depends on the facts of each situation. An experienced attorney can help you build a case that fits the facts you face.

Remedies for Trademark Infringement

Remedies for trademark infringement are established by the federal Lanham Act. They include:

• An injunction prohibiting an infringer from continuing their infringement,
• Recovery of the profits (if any) made by the infringer,
• Damages, including treble damages in some instances, 
• Recovery of the costs of bringing the infringement action, and
• Attorney’s fees in “exceptional cases.” 

A court may also issue an order requiring that any infringing items be forfeited or destroyed. 

In some trademark cases, the damages and other amounts owed are clear and straightforward. In others, the parties may strongly contest how much is owed and for what reasons. When you work with an experienced trademark infringement attorney, your lawyer can anticipate common arguments and defenses, building a case for full and fair compensation from the start.

Speak to an Experienced Los Angeles Trademark Infringement Lawyer Today

At Cohen IP, we understand how important it is to protect your business name and reputation. That’s why we’ve committed ourselves to building deep expertise in trademark infringement litigation. We’re the go-to firm for many clients who trust us to handle their trademark, copyright, and patent infringement claims. 

To learn more about your options in the face of trademark infringement, talk to the team at Cohen IP today. We’re here to answer your questions and help you choose the best course of action for your business.

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