Do you think that someone is committing trademark infringement against your business or brand? Have you received a cease and desist letter accusing you of trademark infringement? If so, continue reading below.
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. 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 an entrepreneur and business owner, has a federal trademark registered 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.
Example:
Bamboo Restaurant Group is a global business that owns and operates chains and franchises of Chinese food restaurants. They have successfully registered for a name trademark of "Bamboo Restaurant" and a logo, depicting a Panda climbing a bamboo stick, for their restaurants. They have owned these trademarks since 1981. The trademarks are registered on the principal register and have been associated with the brand for well over 30 years.
In 1999, a Mississippi company, opens a Chinese restaurant, but they do not consult with a trademark attorney, nor do they have a trademark search conducted. The Mississippi restaurant decides on the name "Bamboo Restaurant Buffet". They have designed a logo with a panda climbing a bamboo stick. The family owned Chinese buffet have chosen both the name and logo because bamboo and pandas are cultural symbols in their Chinese and Cantonese culture.
In 2021, the Mississippi company receives a cease and desist letter from Bamboo Restaurant Group, informing them that they are committing trademark infringement and must rebrand within one month, or be sued in federal court. The Mississippi company contacts a trademark attorney and they are informed the following:
They are committing trademark infringement against Bamboo Restaurant Group.
The names are confusingly similar and restaurant customers will likely confuse the brands for one another, or think that the brands are associated.
Although, the panda and bamboo are common symbols associated with Chinese and Cantonese culture, Bamboo Restaurant Group have owned the trademarks to these names since 1981.
The Mississippi restaurant's best option is to rebrand immediately, instead of seeking to fight this matter in federal court, because they will likely lose.
The best way to avoid trademark infringement is to have a trademark search conducted on the name and logo of your business and brand BEFORE starting your business. To learn more about the value of trademarks, please click the following button below.