A brand can be one of the most valuable assets for a company. Understanding trademark law is critical to protecting a company’s brand value. Trademark infringement lawsuits can be burdensome and distract a company from more productive business activities.  

A trademark is a form of intellectual property that identifies a product or service. Trademarks can be words, phrases, symbols, or designs that distinguish the goods and services of a business from similar uses.  

Trademark infringement involves the unauthorized use of a trademark of another party in a manner that is likely to result in confusion or deception. The confusion may result in consumers wrongly assuming that the deceptively similar brand is associated with the legitimate brand. In order to bring a trademark infringement claim, a plaintiff must present evidence that it owns a valid trademark and that its trademark rights have priority.  

The United States Patent and Trademark Office (USPTO) processes applications for trademark registrations and provides an online database of registered trademarks. The United States has a first-to-use trademark system, which gives priority to the first party that uses the trademark in commerce. Commercial use can be proven by sales records and advertisements. This system contrasts with many other countries, which give priority to the first party to register the trademark.  

The plaintiff in a successful trademark infringement claim must also prove that the defendant’s similar usage is likely to cause confusion to consumers. The factors court consider in the “likelihood of confusion” analysis include the similarly of the trademarks, the similarly of the goods or services, the sophistication of the potential consumers, the defendant’s intent in using the trademark, and the quality of the infringing goods or services. The relative importance of these factors depends on the specific facts and circumstances. 

There have been a number of notable trademark infringement cases over the years that have helped shape interpretations in court cases. In 2015, Louis Vuitton sued a South Korean fried chicken restaurant named “Louis Vuiton Dak” for trademark infringement. In addition to the similar restaurant name, the restaurant used packaging materials with striking similarities to the logo displayed on Louis Vuitton bags. The court ruled in favor of the luxury fashion house, concluding that the name “Louis Vuiton Dak” was too similar to the luxury brand and could easily confuse customers. Even though the businesses are in different industries, it was obvious that the restaurant was using a similar “LV” logo in order to attract customers. 

In another famous case, Starbucks filed a trademark lawsuit against a Canadian food group in 2016, claiming unauthorized use of the Frappuccino trademark. The Canadian food chain had named a frozen beverage product “Freddocino”. In addition to the similar name to Starbucks’ signature frozen coffee beverage, the design and packaging used for the Freddocino beverage largely resembled the Frappuccino in appearance. Starbucks claimed that the Freddocino was a lower quality product and that the similarities amounted to false advertising and could dilute the value of the Frappuccino brand. The Starbucks v. Freddocino case was settled out of court, with the Canadian company agreeing to stop using the Freddocino name.   

Companies should take steps to reduce their risk of a trademark infringement lawsuit by conducting thorough diligence on similar words, phrases, symbols, and designs already in commercial use. Likewise, companies can protect their trademarks from unauthorized uses by understanding the process for bringing a valid trademark infringement claim.