Trademark infringement normally deals with the liability of a person or business attempting to sell goods, products or services as the goods, products or services of another person or business.  The primary concern of liability for trademark infringement, trade name infringement, and for unfair competition is the likelihood of confusion about the single source of a particular set of goods, products or services.  The essential element of a trademark or trade name is the exclusive right of the business or business owner to use a specific word, slogan, design, device or product to distinguish the businesses goods or service from the goods or services of another business.  Unfair competition, on the other hand, generally exists if the total impression or look-and-feel of the package, size, shape, color, design and name upon the consumer or customer will lead to confusion as to the source of the product.

Trademark Infringement

The term “trademark” generally includes any word, slogan, name, symbol, device, or any combination of those elements adopted and used by a business or merchant to identify its goods and distinguish them form those manufactured or sold by others.  More specifically, the term “trademark” has been defined as any word, name, symbol, or device or any combination thereof:

  • Currently used by a person, or which a person has a bona fide intention to use in commerce;
  • To identify and distinguish his or her goods;
  • From those manufactured or sold by others; and
  • To indicate the source of the goods, even if that source is unknown.
  • In business litigation practice, service mark infringement is governed by the same principles as trademark infringement.

Trade Name Infringement

A  trade name is a word, name, symbol, device, or any combination thereof in any form or arrangement used to identify a person’s business, vocation, or occupation and to distinguish that business from the business, vocation, or occupation of others.  A trade name may be a personal name, corporate name, or fictitious name and it may be expressed by the addition of words or terms that are merely descriptive of the goods manufactured, produced or sold, or by a geographical name identifying the location of the business.  However, exclusive trademark rights, in most instances, cannot attach to the use of the additional descriptive terms or words, or the geographic designation.

Unfair Competition

An unfair competition claim may be based on, but is not limited to, the following:

  • The simulation or deceptive copying of advertising methods;
  • The appearance of business facilities, also known as “trade dress”;
  • A product’s shape or configuration;
  • The use of similar corporate, business, and professional names;
  • Trade dress – examples include: business facility or storefront, color schemes or color combinations, shape or configuration of product or packaging, the wording and the form and placement of working on the product or package, and the presence of any decorative symbols on the product or package; or
  • The dilution of goodwill of a trademark.