Once ownership of a mark is established through the registration process, and the final opposition period concludes, the USPTO’s role in protecting a trademark is essentially complete. Though it will bar other prospective applicants attempting to trademark confusingly similar marks, ultimately the burden of enforcing those trademark rights within the market is upon the new owner. Owners may sue to prevent someone else from using a confusingly similar mark. Courts will often examine the following factors in considering such a case.
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Whether or not the trademark is being used in competitive goods and services.
- Goods and services are competitive if the sale of one is likely to preclude the sale of the other.
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Whether or not consumers are likely to be confused by the two entities’ marks.
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Whether or not the goods and services are being offered in similar channels/regions.
Marks infringing on a trademark can result in the need to pay damages, either proportionate to the losses incurred by the owner, (or profits by the offender), or statutory damages inflicted. This is much more likely if the owner can prove malice on the part of the offending party, that is, an intent to specifically copy the mark of the original owner in order to profit off of the likelihood of confusion between two marks.
Damages, customs seizure, and marketplace takedowns each depend on federal registration. See the enforcement and litigation advantages of federal registration for how those remedies work in practice.
Sari Law Firm advises businesses on trademark enforcement and cease and desist letters across California and nationwide.
