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Trademark Infringement Confusingly Similar

Use Caution When Creating A Company Logo to Avoid Trademark Infringement

Have you ever been to a store that has a logo awfully similar to its competitor? Perhaps you have seen an online shop with a logo oddly familiar to another company logo? I’ve seen this twice this week which brings me to publish this information. When two company logos are strikingly similar it is possible a trademark infringement has been committed. The following is some information the United States Patent & Trademark Office published:

What is trademark infringement?

Trademark infringement is 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.

What will happen if someone sues me for trademark infringement

A trademark owner who believes its mark is being infringed may file a civil action (i.e., lawsuit) in either state court or federal court for trademark infringement, depending on the circumstances. However, in most cases, trademark owners choose to sue for infringement in federal court. Even when a plaintiff chooses state court, it may be possible for the defendant to have the case “removed” to federal court.

If the trademark owner is able to prove infringement, available remedies may include the following:

  • a court order (injunction) that the defendant stop using the accused mark;
  • an order requiring the destruction or forfeiture of infringing articles;
  • monetary relief, including defendant’s profits, any damages sustained by the plaintiff, and the costs of the action; and
  • an order that the defendant, in certain cases, pay the plaintiffs’ attorneys’ fees.

Conversely, a court may find instead that (1) you are not infringing the trademark, (2) a defense bars the plaintiff’s claim(s), or (3) other reasons exist why the trademark owner is not entitled to prevail.

How do I know whether I’m infringing?

To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are “senior” to the defendant’s), and that the defendant’s mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties’ marks. When a plaintiff owns a federal trademark registration on the Principal Register, there is a legal presumption of the validity and ownership of the mark as well as of the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. These presumptions may be rebutted in the court proceedings.

Courts have generally looked at the following eight factors to analyze whether a particular situation has developed the requisite “likelihood of confusion” :

  1. the similarity in the overall impression created by the two marks (including the marks’ look, phonetic similarities, and underlying meanings);
  2. the similarities of the goods and services involved (including an examination of the marketing channels for the goods);
  3. the strength of the plaintiff’s mark;
  4. any evidence of actual confusion by consumers;
  5. the intent of the defendant in adopting its mark;
  6. the physical proximity of the goods in the retail marketplace;
  7. the degree of care likely to be exercised by the consumer; and
  8. the likelihood of expansion of the product lines.

Learn More: http://www.uspto.gov/page/about-trademark-infringement

If you’re being sued for Trademark Infringement, speak with a knowledgeable attorney about this matter immediately.

Here is some information the USPTO publishes about this topic:

How does a trademark infringement lawsuit begin?

A trademark lawsuit begins when the trademark owner files a complaint with a court alleging trademark infringement. Among other things, the complaint names the parties involved and sets forth the allegations that form the basis of the lawsuit. Trademark owners who decide to sue may file their complaint in either state court or federal court, depending on the circumstances. However, in most cases, the trademark owner, as plaintiff, will choose federal court. Even when a plaintiff chooses state court, it may be possible for the defendant to have the case “removed” to federal court.

Frequently, either before or at the time a complaint is filed, the trademark owner or the owner’s attorney may send you a letter/email or otherwise contact you to make claims about the owner’s trademark rights and demand that you take certain actions, such as ceasing use of your mark.

Learn More About Being Sued For Trademark Infringement: http://www.uspto.gov/trademark/ive-been-sued

Read about a sample case involving trademark infringement: 7-Eleven Wins Trademark Infringement Suit vs. Super-7 Store

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Points to consider before and after registering a business name or domain name

When a person or set persons start a new business venture, it is an exciting time when you just want to get to work already. I call this the “honeymoon stage” of business. Everyone is collaborating well, ideas are flowing smoothly and depending on your personality, you either start the work immediately because you are motivated and eager, or you take a step back to analyze and consider what needs to get done first.  It is all a happy period of time where you can’t wait to move forward and grow. No one likes to consider the bad stuff that may come about later such as legal problems. Be wise, be that person that does consider such issues to prevent them.

If you have not yet started your business, take a peek at the following recommended points to brainstorm and consider before and after choosing a business name and registering a domain name. If you have started your business and are already growing it, take a moment and review some points that still require your consideration.  These points usually stir up legal problems between businesses at some point in their life cycles if not considered properly.

1. Business Plan. Business plans are roadmaps for a successful business. It generally outlines the route a company needs to take to grow its revenues and profits. If you have time, develop a business plan – even if it is simple – so that you have a living document to refer to.  As you carry on your business, the plans may change, but that is somewhat expected. These are helpful to keep you grounded and focused on your goals. It also serves as a great tool to measure performance per quarter or year.

2. Business Entity.  Consider whether you are going to operate as a sole proprietor or a corporation/LLC. Each one of these options offers different liability shelters and tax benefits that are worth exploring.  Besides performing general online searches about these topics, you best help yourself by seeking a consultation with a business attorney to really help you understand how each option would fit you. Sole proprietorship, corporations, and limited liability companies (LLC’s) are used for different business needs. Analyze your immediate and long-term needs under each business type.  Business entity planning is of even greater importance when dealing with 2 or more business partners. More often then not, partnership issues develop – even with family-owned businesses – where improper planning and document preparation was not in place. Review Buy-Sell Agreements, Shareholder Agreements, and other similar options available to adequately establish your 2+ person business relationships.

3. Business Names. Business names are fun to develop. A business can be named just about whatever it is you want and can be as creative or simple as you desire. However, note that you do not find two companies called “Coca-Cola” or “Pepsi Cola” for a reason. Trademark protections, copyright protections, domain name protections, and state laws exist to limit what you can name our business. As a basic example, if you want to be the next big App developer, you know your space is in the computer and information technology field. You won’t want to use a business name and slogan that is already in commercial use in that same technology field because if you do, it will be a matter of a trademark infringement lawsuit coming your way. Therefore, when doing something as simple as selecting a business name, be sure to perform your due diligence and determine whether anyone else is using that same name at a City, County, State, and Federal level.  Also determine whether they’re using the exact or similar name in your industry.

4. Domain Name Registrations. Before registering for a domain name, perform your due diligence in this step as well by looking for other domains and businesses (both domestically and internationally) already registered. Under business laws, trademark laws, and copyright laws, certain domain names may infringe on an existing business’s rights the minute the domain name becomes registered.  Avoid a trademark infringement claim when choosing a domain name. As a simplified explanation of the standard, if the new domain name causes confusion to the public between the new domain and an existing domain, it is likely an infringing domain. To avoid infringement issues, search the United States Patent & Trademark Office’s website for registered marks, potentially conflicting marks and marks which can cause general confusion.

5. Online Presence. Nowadays, a website acts like an interactive business card. A business website permits the business owner to share information about the business with the world. However, a business owner ought to be cautious with what they publish online and how. To continue with our previous example, if you are the next big App developer developing a gaming app to be marketed towards the public of ages 13+, be aware that there are state and federal laws that require businesses to disclose certain information. For example, a majority of the websites online (especially those for commercial purposes) publish a Privacy Policy, Terms of Service and Statement of Use. Each one is carefully drafted to include the necessary disclosures required of their industry. If you operate a business website and have reason to believe it is used and viewed by minors, you should know about certain regulations applicable to this group such as COPPA, or the Children’s Online Privacy Protection Act. There are a great number of other online regulations that exist. Your use and requirements to address these regulations all depend upon your industry, target market, business practices, state of business formation, and other variables.  Lack of knowledge about these regulations is not an excuse.

6. Online Agreements. Do you know the difference between “browser wrap” and “click wrap?” These are two ways in which an online website visitor agrees to an agreement on your website.

7. Monitoring and Enforcement. Once you register your business name and/or trademark name you then have to monitor for infringement. Unless you enforce your rights to your business name and domain, you may wind up diluting the value of your business and losing your rights.

The above summarizes some points to review before and after moving forward with a new business. However, there are many other points to consider both during and after these stages. A lot of points are purely based on the type of business you plan. Business attorneys experienced in helping sole proprietors and business partners in different industries can be beneficial to you. Consider a consultation for representation with these initial matters. Business attorneys can also help you in the long run with various business transactions. See more and request a consultation.

 

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Do you spot the copyright infringement? A Disney Pixar legal fight is brewing

Are you able to spot a copyright infringement? Often I receive calls from persons and businesses with claims involving infringement by another person or business. During these calls, we discuss fact-based points involved in the developing legal matter before them. Upon meeting, I take a closer look at the works allegedly infringed on and subsequently provide legal counseling and enforcement strategies.

Cars and Autobots

So what does copyright infringement look like? It looks a little something like this story.   Zhuo Jianrong, director of an independent movie and executive director of a film production company states that he has never seen the Disney Pixar film, Cars, upon producing his work, Autobots.  See the Autobots movie poster on the left (image). Zhuo said that his company received legal letters from the Disney Company, which owns Pixar. Disney declined to comment on whether it had sent the letters.  He added that his production company has responded with evidence that “The Autobots” isn’t a copycat.

If this is the first time you view the Autobots and Cars movie posters side-by-side?  Would you be confused by the similarities in drawings alone?  If so, a good suspicion of infringements exists. The next step is to prove it.

Copyrights

Copyright is a form of protection given to the authors or creators of “original works of authorship,” including literary, dramatic, musical, artistic and other intellectual works.

Anyone who exploits any of the exclusive rights of copyright without the copyright owner’s permission commits copyright infringement. If a lawsuit is brought in a court, the infringer will have to pay the copyright owner the amount of money the infringer made from using the work or that the owner would have made if the infringement had not happened.

Proving Infringement

In order for a court to determine that a copyright in a work has been infringed upon it must find that: (1) the infringing work is “substantially similar” to the copyrighted work, and (2) the alleged infringer had access to the copyrighted work — meaning they actually saw it or heard it. There are no clear rules for deciding when “substantial similarity” exists between two works. Courts look for similarities in appearance, sound, words, format, layout, sequence, and other elements of the works.

Let’s follow this story to learn the destiny of the Autobots film.