2017-09-20
When someone is infringing your trademark, many people consider taking the offenders to court. But, is a trademark infringement lawsuit really worth it? Can it be beneficial to wait and consider your options before acting on impulse.
Your trademark is a valuable company asset. Infringement threatens the marks value and the business’ goodwill. When infringement occurs, a good first step is to send a cease and desist letter to the infringer informing them of your rights and demanding that they stop the infringing act. If the infringing party fails to respond to the notice or continues infringing, then it is natural to feel the need to file a lawsuit.
Regardless of how confident you are about succeed in a lawsuit, it is difficult to predict the strength of a defendant’s arguments until you hear them and there is never a guarantee that a judgement will be rendered in your favor. Plus, trademark infringement litigation can be extremely expensive. To succeed, it is important to show evidence of ownership of the trademark, details of consumer confusions and damages due to the infringement. The cost could pose serious budgeting issues, especially for small and medium sized businesses.
So, should you initiate a trademark infringement lawsuit? The answer is complex and requires careful considerations of various factors.
The Distinctiveness Of Your Mark
You may wonder why this is on the list. Considering the level of distinctiveness is vital as it dictates the level of protection available.
Fanciful marks or marks that are invented like ‘Kodak’ get the highest level of protection. Arbitrary marks (ordinary words with no relation to products or services) like ‘Apple’ and suggestive marks (those that hint but do not directly describe the goods and services) receive less protection than the fanciful marks. Clearly descriptive trademarks will receive little or no protection.
While registration does provide some indication that the trademark is distinctiveness, it is important to gauge the mark’s strength against possible defenses.
Proving Consumer Confusion
That there is a likelihood of consumer confusion due to infringement is the most difficult thing to prove during infringement lawsuits. The court considers various factors in analyzing consumer confusion due to infringement like the strength of your trademark, the similarity of the two marks, the related products and services, the location of use, and consumer’s purchase decisions.
If the marks are similar and are being used in the same geographical location or sold through the same marketing channels, then there is a greater likelihood of consumer confusion. But, if not, then it could be more difficult to prove infringement.
Even if all the conditions are satisfied, strong evidence of consumer confusion is vital – one of the difficult things to obtain. Generally, consumer confusion is proved through surveys. While this is a solution to success in litigation, properly performed surveys can be quite expensive and can exceed the value of your trademark. This again poses financial issues. Plus, if the survey is poorly designed or any bias is found, the survey can be worthless in court.
Recovery Of Damages
If there is infringement, there may be certain damages incurred along with the time and money put in the infringement litigation. The law offers relief for lost profits, attorney fees, and any other costs resulting from the damaging infringement. But, one has to prove it. This can be quite difficult at times. Even when successful, there is no guarantee you will recover everything that compensates for the time and effort you put in fighting the infringement. And, what if the infringement was not intentional? You may receive little to no relief at all.
The answer to infringement is not always a lawsuit. Considering these factors and weighing your strengths with that of the defendant’s will help you answer whether or not you should file a trademark infringement lawsuit. It is important to note, however, that a failure to properly protect your trademarks rights can result in a loss of those rights. Since this is not as easy as it seems, consulting a trademark attorney can help you make an informed choice.
