Example of Breaking the Trademark Law

By Louis Kroeck

The most common methods of violating trademark law include trademark infringement and trademark dilution. Although trademark infringement and trademark dilution lawsuits are the most often used methods for protecting trademarks, it is also possible to incur legal liability under theories related to unfair competition law such as misrepresentation and passing off. Finally, there are also anti-cyber-squatting laws aimed at protecting misuse of website domain names.

The most common methods of violating trademark law include trademark infringement and trademark dilution. Although trademark infringement and trademark dilution lawsuits are the most often used methods for protecting trademarks, it is also possible to incur legal liability under theories related to unfair competition law such as misrepresentation and passing off. Finally, there are also anti-cyber-squatting laws aimed at protecting misuse of website domain names.

Infringement

Trademark infringement occurs when the perpetrator uses a trademark that is identical or very similar to another trademark that has already been established. In order to prove infringement the complaining party must show that the other party's mark creates a likelihood of confusion as to the source of goods or services. An example of trademark infringement would be if someone attempted to register the trademark "Koca-Kola" for the purpose of selling soft drinks. This would be infringement because it would be a clear attempt to benefit Coca-Cola trademark and it could potentially create consumer confusion.

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Dilution

Trademark dilution occurs when a perpetrator uses a mark similar to a senior trademark and the new mark tarnishes or otherwise lessens the value of the senior mark. Dilution is different from infringement because likelihood of confusion is not necessary. An example of dilution would be if an adult film company started operating under the name Coca-Cola. Although there is no likelihood that customers would confuse the two companies, the adult film company's use of Coca-Cola's name lessens the value of the famous trademark.

Passing Off

Passing off, or misrepresentation, is a different branch of trademark law that protects unregistered marks. The doctrine of passing off prevents one party from using another party's mark in order to pass off their goods as those of the other party. An example of passing off would be placing the famous Levi's mark, assuming it was not registered, on jeans that were not actually made by Levi's and then selling those jeans to the public.

Cyber-Squatting

Cyber-squatting is the practice of purchasing a website domain name associated with a registered trademark and then attempting to unlawfully profit from the use of that domain name. An example of cyber-squatting would be purchasing the domain name folgers-coffee.com without any legitimate purpose and then attempting to sell that domain name to the Folgers Coffee Company.

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Safe Use of Trademarks

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