What is trademark infringement?: Extended Entry

Trademark infringement can cost your company thousands of dollars. Many companies accidentally embark on trademark infringement without knowing they broke any rules in the first place.

What is a trademark?
When a manufacturer creates a symbol, word, or phrase to describe their product or company image, they have a legal right to trademark their products. This can identify their products to be separate from other company's products. Some companies can go as far as trade-marking their colors or design of certain products (such as a bottle).

The purpose of a trademark is to help consumers easily identify their product or company. Consumers can look for a product by a symbol, such as the Nike "swoosh". In order to qualify for a trademark, the symbol or mark must be distinctive. There are 4 categories defined by the courts in order to qualify for a trademark:
1. Arbitrary or fanciful - These are given a high degree of protection. This mark bears no logical relationship to the product, such as the Nike "swoosh". This mark is identified with athletic shoes, but it does bear an inherit relationship to the shoes.
2. Suggestive - These are also given a high degree of protection. This trademark is suggestive of the product, but does not describe the product. Such as "Victoria's Secret", it is suggestive of women's lingerie but it doesn't come out and state this.
3. Descriptive - This trademark clearly describes a product. A good example is "Dish Network", it represents satellite television. A descriptive trademark must tell you something about the product and can only be obtained if they have a type of secondary meaning.
4. Generic- This mark describes a general category that relates to the underlying product. A generic mark is not protected at all by the trademark laws since they are used only useful for identifying a product.

Your symbol or image must fit into one of those categories in order to obtain legal protection under the trademark laws.

What is trademark infringement?
Now that you know a little about how trademarks are assigned and how they work, let's look at what trademark infringement is. Trademark infringement can invoke customer confusion about a particular product.

If you find that a company has violated your trademark, you can seek legal action. Companies who end up seeking legal action must file with trademark dilution. Trademark dilution is set up to protect a property right of the trademark owner. This makes sense because the owner of the trademark has worked hard in establishing an image or product and if someone steals your hard work to pass off as their own, it is unfair to you as the trademark owner.

How you can prevent trademark infringement
Trademark infringement is quite common for small businesses and sometimes large corporations. An example of a large trademark infringement was between The World Wildlife Fund and World Wrestling Entertainment. The World Wrestling Entertainment Company was known as "World Wrestling Federation". Both companies were associated with "WWF". In the end, the World Wildlife Fund won the legal debate and was awarded with the trademark WWF. The World Wrestling Federation was forced to seek a new name and they are now known as WWE or The World Wrestling Entertainment Company.

Here are a few tips you can take to protect your company from trademark infringement:
When you are naming your business or products, do your research. You don't want to name your business a name of a company who already exists. You can look at the federal database of the U.S. Patent and Trademark Office to see a listing of all the trademarks that exist. Of course, search engines are another great place to look for when seeking information. By typing in your potential company name, you should get a listing of everything that relates to it and you can then search to see if anything is trademarked. There are companies that provide trademark search services for a small fee.

Register your trade name. This is not necessary, but will provide a little extra protection just in case you ever need it. The U.S. Patent and Trademark Office can help walk you through all the necessary steps to register your trade name and trademark. Once you have filled it is up to you to follow up with trademark maintenance. You need to use the "r" symbol on any promotional materials that you send out. It also needs to be shown on your website and invoices. The symbol "tm" can be used if you have filed but have not been given approval yet. Of course you should check with the U.S. Patent and Trademark Office or with a trademark attorney before you start putting "tm" all over.

Trademarks and the Internet
With the popularity websites, choosing a proper domain name is essential to promoting your business and creating the right image. Everyone wants a memorable name that is short and easy to remember. Just be sure that your marketing team is doing the proper legal procedures when they are assigning the domain name or creating certain products.

Since there are so many domain names that exist, it can be difficult to pick a name that doesn't conflict with another company. Many large companies try to force out smaller companies or individuals to give up their domain name. This is particularly troubling if you have spent time and money working on your website and you are force to give up the name.

A good example of an on-going battle for a domain name is Nissan.com. There is a 10 million dollar lawsuit against a computer company called Nissan Computer Company against Nissan Motor Company. Both companies want to host the website and currently it is owned by Nissan Computer Company. This company owned the website for 5 years and then was sued by Nissan Motor Company for trademark infringement. This case is still in the courts and looks as if it may be there for quite sometime.

Again, look at the U.S. Patent and Trademark Office to search for registered domain names so you don't get yourself into trouble. Before you select a domain name, here are a few questions you need to consider:


• Is my domain name conflicting with any other company? Will people be able to identify the domain name with your company or products?


•  Do other companies offer the same products as me? Are the websites too closely related to each other?


•  Is our site name too similar to the competitors? Can potential clients land on their page instead of ours?


•  How well are our competitor's domain names known?

After you have evaluated your website information and you have taken all the legal precautions, feel free to use your domain name. If you still are unsure, seek the advice of a trademark lawyer so you can be sure you don't end up with a nasty letter from a lawyer telling you that your company is in violation of trademark laws.

Defending yourself against Trademark Infringement
If you are unfortunately caught up in a trademark infringement case, there are 4 main defenses that can be used.

The first defense is fair use. This allows competitors to use trademarks or trade names for comparative advertising. The user of the trademarked product must prove that the product in question us not identifiable without the use of the trademark.

The second defense is nominative use. This is used if the product with the mark is used only when reasonably necessary to describe the products or services provided. If you are using someone else's product or name to "bait and switch" customers, then you are in violation of trademark laws.

Collateral use is another defense. This defense can be used is the famous mark is used to describe the products that the user is promoting.

The final defense is parody or satire. This defense is used if a company is using their competitors mark to make fun of their product. Parody is accepted by most courts, but the use of satire is not. Satire is using the owner's product to make fun of something different from the product. The reason this is not accepted is because customer confusion can arise and this can damage the company's reputation. Some states have gone as far as permitting the use of satire.

Trademark laws can be tricky and you don't want to find yourself on the receiving end of a lawsuit. Take all the necessary steps to secure your companies growth and success without causing legal repercussions. Be sure to do your research before you register a website or a particular product or symbol.