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As a company owner, you can avoid a costly and stressing lawsuit for trademark infringement; therefore we bring you some of the most shocking cases of US businesses that violated the law.

Understanding a trademark infringement

Intellectual property (IP) is a crucial tool to protect everything that a human can create. In this case, trademarks are used to distinguish a product, service, and even logos from others in the marketplace. However, disputes can always appear and lead to trademark infringement.

In fact, the illegal use of a trademark is considered infringement. It is important to take into account that there are some laws that are part of any trademark legal process such as the Lanham Act and the common law.

Most of the famous cases of trademark infringement had some true elements before going into court. This also applies to any mark holder who wants to file a lawsuit. For instance,

• The person who wants to start the lawsuit must own the mark.
• The trademark has to be valid for legal protection.
• The illegal use of the mark must be in commerce.

Violating a trademark can take a company to a long tedious legal process that most business owners usually take for granted.

Unfortunately, this was the case of some US companies that are now used as examples of what NOT to do in your business.

Recent Trademark Infringement Cases in the US

The last decade brought new tools to explore the business world. Some companies grew exponentially, but others lost thousands due to lawsuits. In fact, a trademark violation lawsuit can cost from $130,000 to $700,000 in addition to all the time you’ll spend in court.

Whether you are here to avoid trademark infringement or you just want to read more about trademarks, here you have some popular cases of trademark violation in 2019.

1. Nirvana VS Marc Jacobs

A case that started at the end of 2018 ended in a long lawsuit over a smiley face logo. It all began when a clothing designer Marc Jacobs, as well as Neiman Marcus and Saks Fifth Avenue, launched a line that was very similar to rock band Nirvana smiley face logo.

According to the lawsuit, this logo matched almost perfectly to the logo that belongs to Nirvana. In fact, the only difference was that the “x” used in Nirvana’s logo was changed by an “M” and a “J”.

Moreover, Nirvana alleged the Marc Jacobs’ logo infringed the band’s copyright by doing some replacements to make it look unique. Luckily for Nirvana, it is publicly known that the band has continuously used that logo since 1992 to identify its products and music.

• Jacobs Countersued

Yet, Marc Jacobs used this argument to countersue Nirvana a few months later. According to Jacobs’ lawyers, the case was “too deficient” in proving the original designer of the band’s smiley face. In fact, Jacobs claimed that the logo was a commonplace image that he used as an inspiration for his designs

To this date, Nirvana’s surviving members Krist Novoselic and Dave Grohl haven’t recognized who truly created the logo. Jacobs’ countersuit demands the band’s claim to the alleged logo be removed and his company’s money loss to be recovered.

This case hasn’t finished yet since Nirvana’s lawyers claimed that they will continue with the trademark infringement lawsuit.

2. Prime Inc VS Amazon

Even large companies can take trademark infringement for granted such as the lawsuit that Amazon is facing.

This story began when Amazon started using the term “prime” on its trucks which made the trucking company Prime Inc sue the e-commerce company. Prime Inc had actually warned Amazon of the trademark violation a few years ago, but the notification was ignored when the e-commerce business continued to use “prime” markings on its trucks for commercial use.

Prime Inc then started the lawsuit through the Appeal Board and Trademark Trial in Missouri. Prime Inc’s legal team claimed that Amazon’s actions are willful and malicious. Moreover, they have a considerably terrible effect on the trucking company’s marketing efforts.

Amazon created its “prime” service in 2015, but it began to use it on its trucks a few years later even though Prime Inc has been using it for nearly 40 years.

• Different logos to the same problem

Amazon did change the “prime” original logo using a lowercase letter and a different font. According to Prime Inc, however, it still contains the same meaning and commercial impression. In fact, Amazon could have created “Amazon Prime” as a service instead of using just “Prime” which damages the perception of the original “prime” service.

Prime Inc’s trademark infringement lawsuit demands Amazon to stop using the word “prime” on its truck since it causes customer confusion between marks. In other cases, this one has just started and, as far as we know, it may take years before a solution can be found.

3. Deckers Outdoor Corporation VS Australian Leather

US companies are not excluded from international trademark infringement cases. This was the case of the American business Deckers Outdoor Corporation who started a lawsuit three years ago against Australian Leather. The United States-based company alleged that Australian Leather had illegally used the brand name of their sheepskin-lined boots “UGG”.

It appears that the Australian “UGG” caught the American company’s attention when they started selling it on e-commerce websites. The boots generate over $1 billion in revenue a year for the American Business. However, Australia Leather claimed that the term “UGG” was generic and should not be considered a trademark infringement case.

This argument became a terrible decision since the Australian business confirmed that they were willfully infringing upon the trademark which allowed Deckers Outdoor Corporation to continue its trademark infringement letter as well as a design patent infringement claim in relation to the design of the boot.

• False hope

Australian Leather fought back saying that the American business held a global monopoly for prohibiting other companies to produce similar boots since it is a generic design. Furthermore, the trademark infringement lawsuit seemed to turn in favor of Australia Leather when it argued that the term “UGG Australia” shouldn’t be used by the American company since the boots were actually manufactured in China.

In 2019, however, “UGG” was rejected as a generic term by a federal judge who ordered Australian company to pay $450,000 for trademark violation. The case isn’t over, but it became a never-ending nightmare for Australian Leather.

4. Lakeshore Learning Material VS Lego

Even toys can cost you thousands if it is related to trademark infringement. Last year, Lego sued Lakeshore Learning Material saying they had copied the “minifigure” that is trademark protected.

Even though Lakeshore Learning Material launched the product under the name “on-the-go-brick building set”, Lego alleged that the product was too similar to their original design. Moreover, they stated that the trademark infringement had incredibly harmed their brand since it has caused confusion between products.

These mini-figurines have made Lego earned over $1 billion in revenue. Furthermore, they are recognized worldwide and they became an important element for Lego’s brand identity.

• Trademark registrations as a defense

Lego has proved to have trademark and copyright protection internationally. They actually have two copyright and trade dress registrations. All of them described the general and specific features of each of their products including the infringed mini-figurines.

The case has just started and Lakeshore Learning Material hasn’t taken any step, but Lego proves to be confident to win this lawsuit. The demand includes a claim to the Connecticut state trade. The company is also seeking the destruction of the infringing products.

5. Patagonia VS Anheuser-Busch InBev

Does trademark infringement occur by accident or due to a lack of attention? We can never be sure, but Anheuser-Busch InBev (AB InBev) may show us the answer. The brewing company woke up on its left foot when it decided to use “Patagonia” as the name of a new beer. Unfortunately, they didn’t notice that there was a popular clothing retailer with the same name.

Things became worse when the original Patagonia company started a lawsuit against AB InBev claiming that the beer confused customers and it was part of a trademark infringement case. Patagonia’s legal team is prepared for any trademark violation lawsuit. In fact, they even sued President Trump after he tried to limit protected national parks.

Moreover, Patagonia has been in the marketplace for over 30 years, therefore, the outdoor clothing company has a good argument when they say that AB InBev uses its name to earn more reputation.

• A marketing effort or a malicious intention?

Patagonia company took some advantage when it alleged that the AB InBev’s beer was being sold in Colorado ski resorts where Patagonia’s products were widely used as well. It seemed a good marketing strategy for the beer business, but it actually added confusion to the identity of the Patagonia brand.

The trademark infringement case indicates that AB InBev’s beer name wasn’t an accident. In fact, it used a similar logo to identify the beer and it even claimed that they owned a trademark registration for “Patagonia”.

The fight isn’t over since Patagonia alleges that AB InvBev fraudulently gained that trademark which hasn’t been used for six years.

The Most Famous Cases of Trademark infringement of the Last Decade

We just showed you some examples of trademark violation in 2019, but now think about how many cases you can find throughout history. Remember that some trademark infringement cases are nasty and malicious. No wonder they are used as examples of what NOT to do in the business world.

Here you have some other examples of cases that you should learn from:

• House of Cards VS D2 Holdings

D2 holdings sued the brand that is actually the mastermind behind Netflix, MRC II Distribution, and its thriller, House of Cards.

It seems that D2 had trademarked “House of Cards” for its entertainment products and services for more than ten years and it has even been licensed to a radio show.

According to MRC, they have attempted to file for a trademark registration several times before the show was launched. D2’s legal team demands the infringement to stop as well as the goods and gaming machines related to the name.

Furthermore, D2’s claims that MRC knew that the trademark wasn’t available since they repeatedly tried to register “House of Cards” as their trademark, but failed. This case hasn’t been solved yet, but it’s a good example of how a little mistake can lead to future disputes.

• GoDaddy VS Academy Awards

A legal battle that started a few years ago has finally ended. The Academy Awards sued the domain retailer GoDaddy for cybersquatting its company. According to the Academy Awards’ lawyers, GoDaddy allowed its audience to purchase similar domain names that caused customer confusion between marks (2012Oscars.com, for example). These domains let individuals gained revenue from the Academy Awards’ reputation.

Everything seemed to go well for the film awards. They even proved in court over 50 domains that belonged to GoDaddy. Unfortunately, the verdict was in favor of GoDaddy since it didn’t have any “bad faith intent” to collect any profit from their goods.

• Forever21 VS Adidas

Another interesting case is the product confusion between Forever21 and Adidas. Everything started when Forever21 created “three stripes” design products which were very similar to Adidas’ goods.

It didn’t take Adidas much time to file a lawsuit against the alleged infringer claiming they had invested thousands to design and protect the “three stripes” that identified its company. Furthermore, the design had already been registered as a trademark.

The legal teams of both have continued to counterclaim each other over the years, but the verdict is still pending. The only thing we know is that Adidas is sure to prove that the design is more than an accessory since it actually represents its whole company.

• Freddocino VS Starbucks

One of the most popular trademark infringement cases of the last decade began when Starbucks sued its rival, Coffee Culture Café when it released a similar product called “Fredoccino”.

Starbucks’ lawyers alleged that the product was incredibly similar to the one they were selling. Moreover, they used almost the same design and name which was very likely to cause confusion among customers.

According to Starbucks, Freddocino was infringing its registered trademark called “Frappucino” by using misleading packaging to make it look “legal” as a registered trademark.

Coffee Culture Café has removed “Freddocino” and created “Freddo” instead. However, this hasn’t stop Starbucks from continuing the lawsuit.

Key elements to Avoid Trademark Infringement

These examples of trademark infringement cases are sure something we can learn from. If you read the reasons why the companies were sued in the first place, you’ll notice that there are some factors that can determine the future of your business.

• Doing trademark research

Building a company is not just creating some branding strategies. Legal aspects are crucial to protect your products and services. Hence, if you skip everything related to trademarks, you’ll probably run into a lawsuit.

What to do: Do your homework and make sure you understand the basics terms of intellectual property. For example, a patent is different from a service mark and a trademark. This also means you should determine the type of trademark you are registering as well as any logo, slogan, or even colors.

• Checking for Availability

Some of the trademark violation cases are due to a lack of research. In other words, the mark holders chose a trademark that wasn’t available and they still continued to use it.

This is a terrible decision to start in the marketplace. In fact, it is a mistake that can cost a lot of money and time to fix.

What to do: Go to a trademark registration office website such as the United States Patent and Trademark Office’s (USPTO) database and search for registered trademarks that are similar to your business.

Use the Trademark Electronic Search System (TESS) to choose any search option.

• Being overconfident

Don’t make assumptions about what your business will be. Most infringement cases start because the business owner thought its mark was different enough from the competition. There are other cases where the mark holders were aware of the similarities between marks but ignored them since they believed they were effective marketing strategies.

What to do: Looking for professional help is a great option to create a unique mark that will never be sued for any trademark infringement.

There’s no question that taking some time to learn about trademarks can boost your business safely. However, human errors exist and they will always bring terrible risks. This is why you need to use these cases to keep yourself away from any lawsuit.

What we can learn About Trademark Lawsuit Cases

If you already started your business, we recommend you being proactive. This means keeping up with the intellectual property news and learning about any changes in the trademark laws.

On the other hand, if you are about to build a startup, the best option is to begin a registration process to make sure everyone is on notice in relation to your trademark. Remember that it is very easy to cause confusion among marks. There are some confusing elements that determine a lawsuit for trademark violations.

• How similar the companies are even if they are not identical.
• The similarity between products and services (this excludes patents).
• The recognition of the mark in the marketplace.
• Evidence to prove that the mark causes confusion.
• The intentions of the defendant.
• Where the companies are located.
• How customers perceive the mark.
• Whether the companies’ market is likely to grow.

As we read more and more of trademark infringement cases, it seems that even specific terms can be a factor of customer confusion between marks. The only way to avoid this type of infringement lawsuit is to understand everything related to intellectual property. For instance, business owners tend to forget the difference between patents and trademarks.

• Patents vs. Copyrights

Trademarks, patents, and copyrights are part of the intellectual property. A patent is used to avoid others from selling or making an invention for a certain period of time.

On the other hand, copyright is used for creative and artistic work. This means only the original creator has the right to reproduce the work that is being protected by the copyright.

Keep your Business Safe

As you become aware of how trademarks work, you are more likely to avoid a lawsuit. Moreover, you can also protect your mark from someone who wants to use your trademark without your authorization.

In this case, you can send a desist letter and then hire an attorney in order to file a lawsuit.

Brandnic is Available 24/7

We understand that trademarks can be confusing as well as creating a business. Luckily, Brandnic offers professional help that will guide you through the whole process of choosing a brand name.

It’s our mission to help you create an effective list of options so you can narrow it down to your favorite business name. What’s more, every purchase you make includes a domain name, logo design, and free logo revisions.

If you are worried about the legal status of the brand name you want to choose, don’t worry! At Brandnic, you can have trademark monitoring, as well as a common law trademark, cleared names!

We are available 24/7 to answer any queries you have. Let Brandnic help you today and create company name ideas in just a few steps.

Read Time: 12 minutes

In this guide, you’ll learn the basics of trademark infringement as well as some examples of how to avoid it.

Table of Contents

1. What is Trademark Infringement?
2. Some elements about Common Law Trademark Infringement
3. Likelihood of Confusion
4. Why you should be Aware of Trademark Infringement
5. Trademark Dilution VS Trademark Infringement
6. A guide to Avoid Trademark Infringement
7. Keep your business safe
8. Trademark Infringement FAQ
9. Protect your mark with Brandnic

What is Trademark Infringement?

We hear about trademark violations from time to time in the marketplace, but what exactly are they?

Trademark infringement occurs when someone illegally uses a trademark or service mark without authorization from the original owner. This can lead to confusion between marks and loss of public image.

Copyright protects creative work, a patent helps inventors and trademarks prevent others from using the identity of a business.

Remember that logos, phrases, slogans, colors, and words can be considered trademarks.

It is because trademarks help identify many features of a company that there is a likelihood of confusion if a similar mark starts using them.

Needless to say, infringement cases can be considerably expensive since the owner must be able to prove that the infringers confuse the target audience.

Trademark violation is serious and can cause damage to your brand.

For example, the mark holder must use experts, data and a lot of research to prove that the infringement damage is real.

There are some other factors that allow a trademark infringement claim to be accepted in court:

1. The mark must be valid to be protected by a court.
2. The person that started the infringement case must own the mark.
3. The mark of the alleged infringer must be in commerce.

It is important for you to know that there is a law that may pose a threat to any corporation even if it has invested a lot in the trademark.

We are talking about the common law trademark infringement and it’s something you should definitely check.

Elements about Common Law Trademark Infringement

There are some factors that can protect your business, but they can also mean future problems if you ignore them.

No matter what type of business you have, learning of how a common law trademark works can always be useful to protect your business efficiently.

Protecting your business.

What is a trademark Common Law Infringement?

If you are wondering what constitutes trademark infringement, you should know that common law is one of its categories.

In other words, it’s a type of protection for IP even if it hasn’t been registered as a trademark.

This law varies depending on the country, but in the USA for example; it starts when the mark is used in commerce within the country.

Experts suggest that a business can have a competitive advantage when it decides to use technology software to have accurate legal analytics about the available marks. However, it should always be used with a professional team who can guide you through the process.

Other factors you should be aware of:

1. The first to use it has the advantage

In common law, there’s some confusion about what is more important: to file first or to use first.

These two are part of the trademark infringement elements, but their importance relies on the country where it belongs. For instance,

Some countries such as the USA, Ireland and the UK are considered “first to use” since brand names are given protection over other marks without registering to any trademark office like the United States Patent Trademark Office (USPTO).

On the other hand, there are countries that give more importance to registered trademarks even if they aren’t the original owners.

A mark that has been used previously has a chance to win a trademark violation claim in certain cases.

Therefore, you should always research about the trademark registration process before purchasing a trademark.

2. Limited Protection

So far we’ve mentioned that a common law offers protection to those who can prove that have previously used a mark. However, it offers limited protection that many people aren’t aware of.

A trademark can be classified in more than 40 different categories.

Each of them grants legal usage for specific kinds of products or services. When you register a trademark, you’ll be able to maintain legal ownership over these goods.

Nevertheless, common law doesn’t protect trademarks under any specific category nor is able to collect damages from a trademark infringement dispute.

A registered trademark can protect a company’s products and services since they are part of a particular category.

Hence, you can’t assume that your mark will be as protected as one that is legally registered.

3. Domain Usage Matters

Nowadays, a company isn’t a company if you can’t find it on the internet. In fact, there’s more legal confusion in relation to domain names as businesses continue to create their websites.

Domain names are indeed protected by the common law, but luckily they are the easiest to search before using it as your trademark.

At first, there were only a few domain extensions such as “.com” or “.edu”, but now we have varied domain types that sometimes can be “too similar” for their own good.

Check the domain you want to use before choosing your trademark or else you may run into a domain common law trademark infringement.

Common law can be a way to end up in an infringement case, but there are other ways to start a claim if you find enough proof of it.

Likelihood of Confusion

In order to start an infringement case, the mark holder must demonstrate that there is a likelihood of confusion according to some elements that most courts consider:

Whether the two marks are too similar including color and logo similarities.

How similar the products and services are. They also check the marketing strategies that are used.

The two similar marks must not be in the same business industry.

How strong the plaintiff is. A court checks the recognition that the mark has gained over the years.

• Evidence of confusion by the target audience.
• A well-justified intention of the defendant.
• The location and proximity of the two businesses.
• How consumers care about the two businesses.
• How likely the companies are to expand in the marketplace.

It is essential to understand that some of these factors are arguable. Moreover, it is possible to have two identical marks being used in commerce even if they are in the same geographic place.

This is only allowed when the goods and services are different enough to avoid confusion.

For instance, Several companies can operate under the name “Delta” if they are as different as an airline company to a plumbing one.

Why you should be Aware of Trademark Infringement

It is difficult sometimes to understand the importance of trademarks in a business. In fact, it can actually be the most valuable asset in order to maintain your brand’s strength.

You should be aware of trademark infringement damages since it has many factors that are easy to omit when establishing a company.

It’s no surprise how many infringement cases are claimed due to a lack of research that could have avoided confusion between marks.

Being aware of trademark infringement.

Learning about trademark infringement lawsuit helps you choose trademarks that are distinct, but catchy enough to succeed in the marketplace.

Furthermore, the average cost of a trademark claim can vary between $130,000 and $800,000. What’s worse, these cases can last several years.

Just think about how large companies have suffered the consequences of infringing on a trademark? … You probably can’t afford the risks if you are about to build a startup. Either way, here you have some other reasons why you should read everything you can about legal trademarks.

Trademark Violation Penalties

Infringing trademarks are taken very seriously and are often related to deceptive trade practices. Some of the legal consequences that you may face:

An injunction

It means that the legal owner can send a notification requiring the infringer to stop producing and using any goods and services in relation to the trademark until it is authorized by the owner. In the worst scenario, a court can forcefully make the other business to stop working and impose a fee.

Monetary loss

Once the owner proves that there have been monetary damages for violation of his trademark, he will be able to recover them from the profit of the “violator”. There will be an additional fee depending on whether the infringer was using the trademark intentionally.

Trademark Dilution VS Trademark Infringement

You may hear about trademark dilution while reading about infringement cases. They are actually very similar to one another, but it’s essential to understand the difference between them.

Trademark infringement vs infusion.

For instance, Trademark dilution occurs when a famous trademark loses its uniqueness in the marketplace. As well as in infringement cases, most cases of trademark dilution include unauthorized use of trademarks related to products and services.

Trademark dilution damages can be classified into two different types:

Blurring

A mark that weakens another company’s target audience’s perception by using similar goods or services can be claimed to be “blurring” the original business.

The mark is likely to be related to the other similar company which can considerably harm its growth.

For example .. Starbucks Corporation sued Wolfe’s Borough Coffee, Inc for using a trademark for its coffees called “Charbucks Blend” which, according to Starbucks, diluted its brand name. Interesting fact: This case was one of the few considered both blurring and tarnishment.

Tarnishment

On the other hand, a tarnishment case occurs when a mark is related to another similar company that has inferior goods or services.

For example .. If a business sells T-shirts with xenophobic messages under the mark “eBay”, it will mean that the T-shirts might tarnish eBay’s reputation incredibly fast.

Courts look at some important factors in order to determine whether a mark is famous before claiming for a trademark dilution:

• How long the mark has been used.
• How long it has been advertised in the marketplace.
• The geographic place where it has been used.
• The level of uniqueness of the mark.
• How well recognized the mark is.
• The marketing channels that were used to advertise the mark.
• Whether the mark was used by third parties.
• Whether the mark is legally registered.

A guide to Avoid Trademark Infringement

We previously mentioned some of the risks that a trademark infringement lawsuit brings, therefore let’s check some examples and tips on how to avoid this kind of situation.

Experts always mention the importance of the “intent” and how it can determine the result of a case.

For instance,

The Academy Awards once sued GoDaddy for selling domain names such as “20Oscars.com”. The lawsuit claimed that GoDaddy was intentionally profiting from the name of the Academy Awards.

Learning to avoid trademark mistakes.

In spite of this, the court supported GoDaddy because they proved that they didn’t have any dishonest intent to profit from these sales. This case was considered a bad strategy from the popular awards, yet it shows how useful research can be.

Adidas and Forever21, Lucky 13 and Taylor Swift, D2 Holdings and House of Cards are some other well-known cases that were saved by an “honest intent”.

Here you have the most important steps to avoid trademark infringement.

Understand trademarks

Understanding trademarks is not something you can do in a day. There are actually many legal aspects that you should take into account before even thinking about purchasing one.

For example, there can be cases of logo infringement cases as well as many trademark laws that can make you more confused.

If you really want to learn about trademark violations and ways to avoid it, you have to study the whole world where it came from.

We can ensure you that it is completely worth it. Trademarks are crucial to help you maintain the ownership of your business, so it’s something to take very seriously.

Do your research

After learning the basics of trademarks, you should know that it is essential to check the list of brand names you want online before registering them as trademarks. Look for similar names, logos or even products and services.

Even your most creative ideas can already be taken.

Hence, you should look for several pages of results and change of brand name if necessary.

Better hire an Expert

We know that as the owner of a startup the last thing you want to do is to spend more money on building your company.

Nevertheless, trademarks can be complex and even though you may understand everything, hiring an expert will guarantee a safe trademark registration without any future dispute. It’s an investment that can save you money and time.

We always suggest keeping any doubt away by talking to experts who know about this topic.

Remember that when it’s about legal business, research can be your greatest tool.

Unfortunately, trademark infringement defenses don’t work all the time and sometimes it’s easier to rebrand your company with a new mark name. We always recommend considering if you really want to pursue the issue.

Moreover, it is possible to make your business completely unique so you won’t worry about trademark infringement anymore.

Keep your business safe

Registered trademarks are likely to be benefited from the law. This is also crucial when you find out that someone else is using your mark.

Safeguarding your business.

In this case, you can send a cease and a desist letter, but if the other party doesn’t respond, you can then go to an attorney and file a lawsuit.

A trademark infringement letter can be the first step to a long legal process that can save your company’s performance.

Therefore, have your entire paperwork ready before you decide to make the first move.

Take into account that unregistered trademarks probably won’t act as quickly and effectively as a business that was legally registered.

Useful tips to choose a trademark that is safe

Trademarks were created to avoid customer confusion and distinguish a business from its competitors. Hence, choosing the right mark name ensures that your business stays safe in the marketplace.

There are several elements such as sound, sight, and colors that can make a unique trademark. However, you should avoid certain types of names for building a successful company.

Let’s look at some of them ….

Determine your company’s purpose

The first step to create a unique trademark is to study your business. This includes studying your potential competition and the customers in your industry so you can then determine your company’s purpose.

In other words, you should know what message you want to convey to your audience and how you want them to perceive your services and goods.

Brainstorm a list of ideas

Uniqueness is the way of success, therefore having different ideas related to your company’s goals will give you a better understanding of what you are looking for.

Begin by thinking about any word, sound or image that matches your business and writes it down. It doesn’t have to make much sense at first, the important point here is to start creating the essence of your startup.

Avoid descriptive words

A common mistake is to create a name that specifically describes what your business does. Determining your company’s goal should inspire you, but it doesn’t mean you have to use “Best Chocolate Bars” as your trademark.

Be creative and avoid using geographical names and surnames as well. For example, “Joe’s NY Coffee” sounds uninteresting and it’s very likely to have been used before.

Trademark Infringement FAQ

Important tips.

1. Do trademark offices reject similar trademarks?

Many people rely on the idea that trademark offices won’t accept similar trademarks, but it usually isn’t the case. A trademark office won’t allow an identical trademark to be registered, but it won’t tell you if a similar trademark was created. Hence, it is recommended to check the marketplace regularly in order to detect any trademark that can affect yours.

2. What can I do if I’m accused of trademark infringement?

Alleged infringers can claim that they are using the trademark under the collateral or fair use as a defense.

Collateral use means that you have the trademark as part of other inventions while the fair use lets you use another’s trademark as long as it’s for teaching or news reporting.

3. Can I change an existing logo to avoid a trademark violation?

The answer to this question can vary depending on the case. Remember that infringement cases are subjective and even if you manage to change a logo to avoid Google Images detectors, the original company can still prove that you are damaging its public image.

You should take into account that copyright protects any artistic expression such as logos. The only way to avoid infringing on a copyright is to use a logo that contains words instead of images.

4. How can I check the similarity of marks?

You should check how similar two marks are depending on their appearance, pronunciation, and meaning. A court also considers how the public perceives the mark.

As we mentioned above, two marks that have similar names, but are aimed at two different target audiences can be omitted for a trademark infringement lawsuit.

Get a Protectected mark with a Domain name from Brandnic

Keeping your business safe is our priority. In fact, we offer more than a thousand of brand names that are unique and catchy to have a successful start in any industry. Moreover, you will receive a free logo related to the brand name you chose.

Domain name with registered trademark rights from brandnic.

We are aware of the importance of registering your mark, therefore every purchase includes common law trademark and trademark monitoring.

At Brandnic, you’ll have a team of experts that can guide you through the whole process to ensure our customers a 100% secure guaranteed.

Moreover, we are available 24/7 to answer any queries you have. Visit us today and check some great trademark ideas.

Read Time: 11 minutes

Table of Contents

1. What are trademarks?
2. Types of trademarks
3. What types of trademarks can be registered?
4. What cannot be trademarked
5. Reasons to understand types of trademarks
6. Things to take into account
7. Trademark FAQ
8. Common mistakes
9. Steps to start filing
10. Final considerations
11. You can count on us

What are trademarks?

Some people define trademarks as a legalized form of a brand. In fact, a word, phrase, logo or symbol can be considered a trademark as long as they identify a specific source of products or services.

The reason is simple. It is the legal way to distinguish some products from others and avoid disputes over ownership.

For instance, Google, Coca Cola, and Facebook are some of the most known trademarks that once went through this process.

Understanding trademarking.

You may think that registering a trademark is a big hassle, but let us tell you that getting your company trademarked is a highly recommended investment. Some remarkable benefits:

• Inspire trust in your target audience.
• Appreciate in value over time.
• Higher traffic on websites.
• It’s easy for customers to identify you.

Now that trademarks caught your attention, we can offer you a guide on how to register them in an effective way. This process can either be done via a trademark office or through common law.

We’ll continue with this up ahead, but now we’ll guide you through the first step you should follow: learning about the types of trademarks.

Types of trademarks

Types of trademarks out there.

1. Too General Marks

Generic trademarks are not allowed to be registered for the fact that they aren’t specific enough to be distinguished from other companies.

Let’s say you’d like to register a mark called “The hairdresser’s” and a trademark office agrees to it. It would mean that all other shops won’t be able to sell hairdressing services anymore.

The only way to register a brand name that has fallen into generic classification, it’s to specify more details about it.

Think about the characteristics and qualities that make your business unique.

However, you have to be careful not to describe too much because you may run into a descriptive trademark.

2. Descriptive Marks

It’s the easiest to create in the marketplace as well as the generic one. You just have to identify some specific characteristics of your products or service and turn them into your company’s name.

For instance, the “NY Spicy chicken sandwich” describes what exactly the company does. Hence, it’s a mistake that affects your marketing efforts.

It sounds like a good plan until you face trademark laws which dictate that all trademarks must have a meaningful name valuable enough for advertising. It’s the only way customers can identify the mark as your brand.

3. Suggestive Marks

We are getting more creative and suggestive marks are here to show us that. It means that a trademark is indirectly related to the products or services it offers.

In other words, customers must figure out what the product or service offers through their imagination.

For example, Pinterest, Microsoft, and Netflix are considered to be suggestive trademarks types.

Some people consider it an intelligent way to use references to your benefit. Nonetheless, there are even more unique ways to create an interesting trademark.

4. Fanciful Marks

Unique mark names are here to stay and fanciful trademarks are good proof of it. This category of trademarks includes all those mark names and logos that have never existed before.

It’s a great option for those trademark owners who are seeking trademark protection fast. Moreover, it brings many ideas for marketing strategies and campaigns.

Kodak, Exxon, and Adidas are well-known companies that fit in this kind of trademark.

However, if you aren’t good at inventing words, you can still choose some real ones and use them as an arbitrary trademark.

5. Arbitrary Marks

Arbitrary marks are real words that have nothing to do with the product or service. It’s a clever tool to create catchy trademarks that people will feel identified with while avoiding being classified as generic or descriptive.

Some examples of this: Apple, Amazon, Dove are successful companies that are currently in the arbitrary mark category.

6. Certification marks, collective membership marks, and collective trademarks.

These trademarks help identify the type of ownership it has been registered. For instance, a certification mark determines which authority will give certification of goods. On the other hand, collective membership marks are for members of a specific organization or association.

It means that it helps distinguish those products or services that don’t belong to the group as well as it shows the membership of every partner.

Finally, collective trademarks protect groups that own design, logo or symbol together.

What types of trademarks can be registered?

Learning about the different types of trademarks can be a lifesaver for your startup. Yet, you finally want to be sure which marks can be registered.

Types of trademarks you can register for your business.

To sum up, descriptive and generic trademarks are mostly rejected by trademark offices such as the United States Patent and Trademark Office (USPTO). Take into account that some exceptions may apply.

Fortunately, trademark categories such as arbitrary, fanciful and suggestive are likely to be registered.

However, there’s another trademark category that is unusual, but sometimes acceptable for trademark laws.

Non-conventional trademarks

Also called unconventional marks, they are new kinds of trademarks that don’t fit properly in any of the previous categories.

They are usually difficult to register, but they can still fulfill trademark functions. Moreover, they often get recognition for their distinctive characteristics. They are divided into subcategories:

• Sound mark: Some musical notes, for example, can be considered unique features that are distinctive enough to be sound marks.
• Shape Mark: Products and packaging that have specific shapes can be classified as shape marks. For instance, bottles and ornamental lamps.
• Color Mark: If one color becomes a specific feature for a particular business owner, it can be registered as a trademark. Barbie pink and Tiffany Blue are good examples of this.
• Smell marks: Unique smell that is directly related to a certain good or product can be registered as a trademark. For example, strawberry toothbrushes and bubble gum scent for sandals.

We also want you to understand that just because a trademark is not part of these categories, it doesn’t mean it can be registered.

What cannot be trademarked

There are other cases where you won’t be able to register your business. Each case is studied independently and they usually don’t fall in any category.

Things cannot be trademarked.

• A mark that has become conventional in the current language. For example, “Karaoke” and “chef” are now common in the English language.
• A mark that is too similar to a well-known trademark won’t be allowed to be registered. In other words, trying to register a mark called “Colgate” may be difficult since it can cause confusion with the famous trademark “Colgate”.
• A mark that uses a famous nickname or name won’t be able to register it as a trademark unless the business is previously allowed to use the name by its original owner.

Reasons to understand types of trademarks

Learning about the different types of trademarks is sometimes underestimated, but it’s actually very important to understand how trademark protection works and how it can benefit your growing business.

Understanding different kind of trademarks.

Understanding types of trademarks lets you know whether you should modify your mark and how likely you are to have your trademark approved. Other benefits that trademarks will bring:

1. Trademark distinctiveness

Consumers will identify your mark easily as well as its goods or services. Categories of trademarks allow a more organized process of application and reduce any risks of confusion.

2. Brand loyalty

A logo, symbol or slogan can determine your success in the marketplace and, luckily, they all can be trademarked.

Don’t miss our expert guide on slogan trademarking

Once you understand in which category your business features fall into, it will be easy for you to create memorable marketing strategies and gain the best reputation among your target audience.

To put it simply, knowing what kind of business you are building will help you achieve brand loyalty almost immediately.

3. Protection against trademark infringement

Almost all kinds of trademarks are protected by the Lanham Act which is crucial in case of infringement.

This is the type of law you want by your side since it is the only one that allows you to produce and profit from the mark and restricts other business owners to use it without your consent.

We can assure you that you’ll feel safer buying a trademark than risking your business in the marketplace.

Remember when a person starts using a similar mark to yours and neither you nor the other business owner has a trademark, you will be involved in a long and tiring legal process that doesn’t guarantee the ownership of the mark.

In the trademark world, it’s better safe than sorry. Therefore our suggestions are to always assess to your mark and find what category is the most appropriate for it.

Lack of research will be a waste of money and time for everyone, but fortunately, if you are reading this guide it means you are going in the right direction. Let’s look at some indispensable tips about your type of trademark.

Things to take into account

Let’s say you already determine your kind of trademark and you want to proceed with the application. Luckily for you, all the basic steps are on the USPTO’s website and the process is simple in general.

Things to take into consideration before getting started.

However, there are several details that people ignore and they can quickly become a headache.

Here you have some frequently asked questions about any trademark process and what could happen if you don’t understand the types of trademarks on time.

Trademark FAQ

Is there any difference between the kinds of trademarks?

The different categories we mentioned above help determine how unique a mark is and how much protected it will be in legal cases.

The main difference is that, depending on the type of trademark, a federal court will be able to identify more effectively which authority owns the mark in discussing.

Is a service mark a type of trademark?

A service mark is indeed considered a type of trademark. That is to say, it is the category for a company’s services. They usually use slogans without logos compared to other types of trademarks that include other features.

You should register a service mark as well as any other type of trademark since intellectual property (IP) is handled the same way for this process.

Trademark FAQ’s explained in details.

Is copyright a type of trademark?

These can be some of the commonly confused words in the financial picture, but they are indeed different from one another.

They both use IP protection for different types of assets, but while trademarks help identify a company brand, copyright protects artistic and literary works.

For instance, JK Rowling can trademark the name and logo of “Harry Potter”, but she would have to copyright the book and the movies.

Is there a deadline?

There isn’t a deadline for any type of trademark. However, starting an application process doesn’t ensure any protection against other businesses.

We highly recommend you to finish registering a trademark as soon as you can. Remember that this type of process is the only one that you can use as a defense in any future dispute.

People usually get too relaxed when they realize there isn’t an important deadline to file all the required documents, but this is actually a common mistake that can affect your company enormously.

Let’s look at some “don’ts” when applying for a trademark.

Common mistakes

We understand making mistakes is a human thing, but in the marketplace, it can cost you a lot. Therefore, you should be aware of some details people take for granted.

The first one would be using TM (unregistered trademark) and SM (unregistered service mark) symbols without ever completing the registration process. We already said that there aren’t any deadlines for the application, but symbols such as TM and SM don’t hold any legal importance in relation to ownership.

Common mistakes when registering a trademark.

Once you finish what you started, you’ll see that there won’t be any legal restrictions for your business.

Another common mistake is not to search properly for similar trademarks. This is one of the crucial steps while registering your business since there can be other previous trademarks that have been canceled and now they are “dead”.

Moreover, you don’t know if there’s another business owner that has a similar mark, but as in your case, he hasn’t registered it as a trademark.

If that is the case, you must know that the original owner can prove the mark is his through common law even though he never actually registered it.

Steps to start filing

Once you determine what type of trademark your business belongs to, you can start filing the necessary paperwork at the USPTO.

Remember that you must have a U.S licensed attorney if you are a foreign domiciled applicant.

Steps to start filing your trademark application.

1. Check for any existing trademarks

The first step before filing is to check any similar trademarks to yours at the Trademark Electronic Search System (TESS).

This USPTO’s database can save you a lot of money and time.

USPTO confirms real-time trademark confirmation … since it can tell you the status of a pre-existing trademark and who the owner is.

In the case that the trademark that you want to use already exists, but no one is using it (also called dead trademarks), you still have some chance to buy it through another different filing process.

2. Complete the trademark application

All the necessary documents are explained at the USPTO’s website. Some of them are an intent-to-use unit, post-registration division office action and petitions office letter.

You should know that this process is completely online.

There’s a processing fee that ranges from $200 to $300 depending on the type of goods or services.

Remember to submit your documentation along with a layout of the mark, colors, and anything that identifies it.

3. Check your trademark status regularly

Don’t think that sending all required paperwork means that you already have the trademark.

Now you are in the review process and it can take some months before the assigned examiner determines the validity of your business.

During this process, you may have to update more information and documents if the examiner requests it, therefore it is crucial that you keep monitoring your application through Trademark Status and Document Retrieval (TSDR).

4. Start using your trademark

Once your trademark is approved, you are free to start using your trademark.

However, you should take into account that USPTO publishes all new trademarks so other parties can check it doesn’t infringe on their own business name.

This is when the Trademark Trial and Appeal Board should help you find a solution. Yet, you should know that these cases occur mostly for lack of proper research and professional guidance.

5. Protect your rights

The USPTO doesn’t monitor the use of marks which means it won’t let you know if another business owner starts using a similar trademark.

The best you can do is to check regularly other similar companies and bring any legal action in case of infringement.

The USPTO will soon send you a certificate of registration which you should always keep around.

This doesn’t mean you should forget about USPTO. In fact, they sometimes request maintenance documents that you should update from time to time.

Final considerations

Trademark offices protect your mark, but they don’t advise you on how to create your business name. You should have clearly in mind all the features of your mark and the goods of your business.

The USPTO also requests identification of the type of trademark as well as the type of goods and/or services.

A single mistake such as classifying an apparel business in the technology category can be reason enough to delay an application process.

Be specific as much as you can and pay a lot of attention when filling the application form. The USPTO usually asks to select one of the three possible formats at its website in order to identify your mark faster. They also use it to print your mark in their Official Gazette (a weekly online publication).

You can count on us

We recommend finding professional help in order to avoid any mistakes and complete the process as effectively as possible.

Brandnic is your solution when registering your type of trademark. We support your business ideas in an efficient way as well as we ensure our customer 100% secure transactions.

Moreover, each purchase comes with a domain name, logo design, free logo revision, and common law trademark.

Let Brandnic help you and contact us today.