A company’s brand is a major source of value for companies. That’s why protecting your trademark is so vital—and why infringement can be so damaging. The Lanham Act allows companies to stop infringement against their trademark and to collect damages for such offenses. If you believe that another company is infringing against your trademark, you may want to consider bringing a Lanham Act Trademark Claim. A Priori Legal IP litigator can help you ascertain whether you have a claim and strategize how to best address it.
What Is the Lanham Act?
The Lanham Act, also known as the Trademark Act, is the main federal law governing trademarks in the United States. The Lanham Act establishes a means through which trademarks can be federally registered and recognizes that a trademark additionally gains protection simply through a distinctive character and public use. It also makes it illegal for other companies to use of similar marks if such use is likely to result in consumer confusion, either due to operating in the same or similar markets or through the dilution of a famous mark.
Trademark Infringement & Dilution Claims under the Lanham Act
The most common claims made under the Lanham Act are those related to trademark infringement or dilution. These claims can be brought in federal court if the trademark is registered through the procedures established in the Act.
What Must Be Proven for an Infringement Claim
In order to prove infringement or dilution in a trademark infringement claims under the Lanham Act, the alleged infringing trademark must be used such that the four following conditions are proven:
- through any reproduction, counterfeit, copy, or substantially similar imitation of a registered mark,
- in commerce,
- in connection with the sale, distribution, or advertising of goods or services, and
- in cases where such use is likely to confuse, cause mistakes, or deceive the consumer that they are buying a product associated with the trademark.
What Must Be Proven for a Dilution Claim
In order to bring a trademark dilution claim, the same conditions must be met as in an infringement case, but the trademark must also be famous. The Lanham Act instructs the courts to consider the following conditions to determine whether or not a trademark is famous:
- the degree of inherent or acquired distinctiveness of the trademark,
- the duration and extent of the trademark’s use,
- the amount of advertising and publicity surrounding or using the trademark,
- the geographic reach of the trademark,
- the channels of trade where the trademark is used,
- the degree of recognition that the trademark has,
- any use of similar marks by third parties, and
- whether the mark is registered.
If the trademark is, in fact, determined to be famous, the plaintiff must also prove that the defendant is making commercial use of the mark, the similar mark was not used until after the plaintiff's trademark became famous, and the defendant's use of the similar trademark will likely dilute the distinctive value of the mark. Unlike in regular infringement cases, dilution claims to not have to objectively cause damage to the company.
Defenses to Trademark Infringement or Dilution
There are several defenses to a trademark infringement or dilution claim. The most common defense is noncommercial use, such as reporting, commentary, parody, or criticism. Fair use, such as comparative commercial advertising or promotion, is also a common defense.
Remedies Available Under the Lanham Act
The Lanham Act allows for several civil remedies for violations of provisions of the Act. The most common is injunctive relief, that is, a court order for the company to discontinue its actions. If your company experiences losses or damages due to trademark infringement or false advertising, you may also be able to recover damages, such as lost profits. In the case that the infringement or false advertising was done maliciously and knowingly, you may even be able to collect penalties and recover attorney fees.
Is buying a domain name that pertains to a trademark considered a violation of the Lanham Act?
No, but it may be a violation of the Anticybersquatting Consumer Protection Act. The Anticybersquatting Consumer Protection Act allows for claims relating to the registration of, traffic in, or use of a domain name confusingly similar to, or dilutive of, a registered trademark.
Can I make false advertising claims under the Lanham Act too?
The Lanham Act also contains a portion of false advertising law, which allows competitors to bring claims against companies for unfair competition related to misleading advertising or labeling. For a false advertising claim under the Lanham Act, the plaintiff must prove that the company:
- made an objectively false or misleading statement of fact,
- it was used in a commercial advertisement or promotion in interstate commerce,
- its use deceives or is likely to deceive consumers in a material way, and
- such false advertising has caused or is likely to cause competitive or commercial injury to the plaintiff.