Trademark Infringement: A Conversation with Trevor Bradford

Trevor is an experienced attorney with a strong background in litigation and intellectual property law. He is also a compliance professional with expertise in regulatory compliance, policy and procedure development and enforcement, customer relationship management and retention, contract preparation and negotiation, and cybersecurity and privacy.

Since earning his law degree in 2004, Trevor has become an accomplished trial attorney, created and taught intellectual property curriculum for computer science professionals, conducted bench trials for six years to resolve disputes as a small claims judge pro tem, and most recently serves as general counsel for FluentWorlds--a 3D immersive English language training platform.

So, without further ado, let’s get into our conversation.

What exactly is trademark infringement?

Trevor: Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the license).

Trademark rights are strongest when they’re based on federal registration, although there are also limited rights associated with state trademark registrations and common law trademarks that aren’t formally registered.

How does trademark infringement happen?

Trevor: Infringement may occur when one party, the “infringer,” uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers. An owner of a trademark may commence legal proceedings against a party which infringes its registration. In other words, the trademark owner can sue the infringer.

What are some of the factors that help a client decide whether or not to pursue enforcement activities against a potential infringer?

Trevor: There are both business factors and legal factors that influence how owners might manage their trademark rights. From my perspective, as the attorney, I usually weigh the legal factors more heavily. It is up to the client to decide how to weigh the non-legal factors.

Let’s start with the business factors. What are these factors?

Trevor: Some of the important business factors clients should consider include:  

• Cost.
• The importance of the IP at issue (enforcement efforts are usually much more likely to be undertaken against potential targets when the alleged infringement involved the client’s “core” IP).
• Whether or not the potential infringer is a competitor.
• If the similar mark is unflattering or disparaging.
• Client-specific needs.

Okay, and what are some of the legal factors?

Trevor: The issues around trademark infringement most often turn on the issue of likelihood of confusion. The most-often embraced test is the one set forth in the Ninth Circuit’s decision of AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 9th Cir. 1979) (“the Sleekcraft Factors”) in assessing the likelihood of consumer confusion.  

These factors include:

1. Strength of the protected mark.
2. Proximity and relatedness of the goods.
3. Type of goods and the degree of consumer care.
4. Similarity of the protected mark and the allegedly infringing mark.
5. Marketing channel convergence.
6. Evidence of actual consumer confusion.
7. Defendant’s intent in selecting the allegedly infringing mark.
8. Likelihood of product expansion.

Do these legal factors ever change?

Trevor: These legal factors might differ slightly from jurisdiction to jurisdiction, so be sure to check your jurisdiction. In other words, some courts in different areas have fashioned their own tests for likelihood of confusion. See, for example, In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), known collectively as the DuPont factors. Also, for reference, the DuPont factors are often used by the US Patent and Trademark Office when applicants are seeking registration of their trademarks.

What kinds of consequences can the infringer face if they are found guilty of trademark infringement?

Trevor: There’s a range of possible results. For example, a court will usually require the infringer to stop using the trademark, and they might have to pay monetary damages to the trademark owner.

Damages can be calculated by estimating the profits to the infringer or the lost profits to the owner. In extreme situations, the infringer also might have to pay the attorney fees of the owner--this means the infringer has to pay the fees for the owner to sue the infringer.

Those can be serious consequences. How would somebody defend themselves if someone accused them of infringement?

Trevor: The main ways to protect yourself against a claim of infringement are to challenge the validity of the trademark status--maybe even get the registration canceled--or to show that you used the trademark in a fair way.

Some examples of “fair uses” might include referencing the trademark in the way the owners intended, comparing different products with each other, or obviously making a joke, or parody, that involves the trademark.

What is something you wish people knew about trademark infringement cases?

Trevor: Obviously, every case is different, and there can be a lot of twists and turns depending on the specific circumstances. The recent Nike “satan shoe” case is a great example of how different circumstances and business objectives can show up and get resolved. In every case, it’s important to be very strategic up front and think about how to plan the best way, with the given facts, to achieve your business objectives.

This is great information, Trevor. I think it will be extremely helpful to clients who find themselves on either end of a potential trademark infringement issue. I really appreciate you taking the time to share your thoughts on this topic.