In the previous section, What can I do if my trademark is being infringed?, we talked about
various circumstances that can be interpreted as trademark infringement. Trademark infringement occurs when another party misappropriates your
mark for commercial use and, subsequently, your mark suffers a reduction in value. After infringement occurs, the question quickly turns to
what can be done about it?
The main benefit of securing a trademark registration is that you can enforce its rights under federal and state law. The first thing you will
probably want to do is obtain an injunction. Injunctions are judicial orders prohibiting persons or entities from a course of conduct. In this
case, you could seek an injunction preventing others from using or diluting your trademark. See 15 U.S.C. 1116(a).
Often times, this will not be enough. Trademark infringement can impose significant costs and damages to the mark holder. To recover for these
losses, you can sue the offending party for several things including, but not limited to, some of the following:
Any profits the defendant obtained.
The total damage that the plaintiff suffered.
All costs related to bringing the lawsuit.
See 15 U.S.C. 1117(a). However, if you are bringing a trademark dilution case, then you must illustrate that the defendant knowingly used
the plaintiff's mark in order to receive damages. Although, you can still receive an injunction in dilution cases without showing intent.
Substantively, if you bring your case under federal laws, it will probably be either one for consumer confusion or trademark dilution. State
laws present various other options for claims such as passing off and misappropriation. Many of them resemble federal actions in spirit if
not in name but you should review your own state's law and their procedural requirements.
In the next article, we discuss what defenses others could use against your trademark action.
