A trademark is a name, logo, word, symbol or phrase that is used by seller or manufacturer of goods to distinguish its products from others. When these types of marks are used for services they are called service marks but they are treated the same way as trademarks. So what's the value in a trademark? Generally it's that the consumer is able to tell one manufacturer's product apart from another and in doing so identify quality, durability and trust in that particular manufacturer or seller. When you buy a certain brand of item, you are buying into the recognition of quality that comes with that particular trademark.
Trademarks don't have to be registered in order to benefit from legal protection. An unregistered trademark could still be protected under the common law (i.e. the non-written law that has developed over many centuries from English law). However, protection is limited only to certain geographical areas: where the trademark has already been used, or might be expected to expand into, within reason.
If, for example, you purchased a Mont Blanc fountain pen, with its six-point snowcap effect on the tip of the lid, you would expect it to be of very good quality and durability - which is reflected in the price. However, if another pen manufacturer copied the trademark snow-cap and tricked you into thinking what you were buying was a Mont Blanc fountain pen, they would be infringing Mont Blanc's trademark. Mont Blanc would file suit against this manufacturer for infringing its trademark.
Broadly speaking when considering whether or not a trademark has been infringed the courts apply a test of ‘likelihood of confusion.' There are a number of factors to consider –for example, how similar the marks are, the strength of the plaintiff's mark, how close the goods were to one another. In addition the courts will also consider whether anyone was actually confused, the purchaser's prudence and, very importantly, what the defendant intended at the time – which can have a significant effect on an award of damages.
Under federal law, dilution can only be brought in cases where the trademark is well known. If the claim is brought under state law, there is no such requirement for the trademark to be well known but the mark must have a quality attached to it, and the offending mark must be substantially similar. Dilution is blurring or tarnishing a brand, either by associating it with dissimilar or unrelated goods (blurring) or by relating the brand to undesirable or unappealing products (tarnishing.)
On the opposite end of the scale, you might assume that applying the name Mont Blanc to a dandruff shampoo might give the pen makers a cause of action but it would be unlikely to infringe on their trademark because the two products are totally unrelated (in other words, there is no likelihood of confusion.)
There are two main defenses in a trademark suit: fair use, which means that you were using a descriptive mark in good faith or parody – but only if it is not directly used in relation to commercial gain. Courts have a variety of power under federal law to deal with these types of lawsuits.
In dilution suits the successful plaintiff can only expect damages if the defendant used intended to gain from the improper use of the mark – if this is not the case, the only remedy is an injunction. After a successful infringement suit, plaintiffs may be awarded financial recompense by way of defendant's profits and the damage suffered by the plaintiff plus costs of bringing the action. Such an award may increase significantly if the defendant is found to have acted with dishonorable intent.
If your suspect that someone else is using your trademark, consult an attorney without delay.
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