This is a Part Two of the article. In Part One you can find general information on trademark infringement, registered and unregistered trademarks, as well as details on likelihood of confusion when it comes to trademark infringement cases.
Trademark Dilution
Trademark dilution applies only to famous trademarks and can be of two types:
- Dilution by blurring
One of the most famous examples of this type of trademark dilution is using eVisa by JSL Corporation (Visa International Service Association v. JSL Corp., 610 F.3d 1088 (9th Cir. 2010)
Defendant Joseph Orrm provided English language tutoring services under the name āEikaiwa Visaā through JSL Corporation, and was using the abbreviated version āeVisaā, as āeā was short for Eikaiwa (Japanese word for āconversationā). The Plaintiff, Visa International Service Association, filed a lawsuit regarding the dilution by blurring against the JSL Corporation. The court determined that the Defendantās mark caused dilution.
- Dilution by tarnishment
An example of dilution by tarnishment is found in Grey v. Campbell Soup Co., 650 F. Supp. 1166 (C.D. Cal. 1986).
In this case, Campbell Soup Company, the owner of theĀ GodivaĀ brand, renowned for its fine chocolates, brought an action against Cynthia Grey for trademark infringement and dilution. Grey marketed dog and cat biscuits under the marksĀ DOGIVAĀ andĀ CATIVA, using packaging that mimicked Campbellās distinctive gold-foilĀ ballotintrade dress. The court stated that the association of Campbellās luxury chocolate brand with pet food products injured the reputation of theĀ GodivaĀ mark.
Counterfeit
Unfortunately, the problem of counterfeiting is eternal. The existence of counterfeits threatens not only brand owners and brand reputation but also consumers, their health, and their lives. For example, if a patient purchases counterfeit medicines with no therapeutic effect, they are deprived of the necessary pharmaceutical treatment.
That is why liability for counterfeiting is stricter and provides for both criminal sanctions and special civil sanctions (for instance, treble damages or profits and a reasonable attorneyās fee in case the infringer was engaged in counterfeit activity intentionally and knew that the goods were counterfeit).
Trademark Attorney Insights Regarding Trademark Infringement
If you have discovered infringement of your trademark rights, then:
1) Check the validity of your rights (whether you have filed a statement of use for maintenance of your trademark and renewals accordingly). If it is a common law trademark, then check whether it has been used continuously and has not been abandoned, and what evidence you have of use of the trademark from the time you claim to have started using the trademark.
2) Consider the potential actions of the infringer, for example, whether they can file a counterclaim to cancel your trademark.
3) Decide whether you will first send a cease and desist letter to the infringer or immediately file a lawsuit. The benefit of such a letter is that it allows the dispute to be resolved quickly and cost-effectively. Furthermore, when an infringer ignores a cease-and-desist letter, this may strengthen the basis for recovering damages for willful infringement. However, sending a cease and desist letter also has disadvantages. In particular, the infringer may file a declaration of non-infringement or start a cancellation action before you file a lawsuit.
If you have received a claim or complaint regarding trademark infringement, then:
1) Check your response deadlines and consult with a trademark infringement attorney who can advise you on your next steps.
2) Check the status of the trademarks you are accused of infringing ā whether the trademarks are valid, renewed, and for which goods or services they are registered.
3) Assess your chances of applying defenses in this case and your chances of reaching a settlement.
In case you have any questions left or you need help from a trademark infringement attorney, call Mariya Ortynska at 9147035632 to receive a free consultation and build a strategy for your specific case.