Penalties for Trademark Violation

By Jonathan Layton, J.D.

Penalties for Trademark Violation

By Jonathan Layton, J.D.

A trademark is a valuable business asset. Many consumers make purchase decisions based on the popularity or reputation of a particular brand, represented by its trademark.

However, if a federally-registered trademark is used without your permission as the holder, it can lose value. For that reason, companies work hard to protect them, relying on the court system to back them up. Penalties for trademark violations can be severe.

Trademark Infringement Monitoring

Many companies carefully "monitor" where and when their trademarks are mentioned or used impermissibly as a means of detecting trademark infringement.

It is your responsibility as the trademark holder to watch for unauthorized third-party use of your trademark constantly. Although the United States Patent and Trademark Office (USPTO) is generally responsible for defining trademark violations, such violations are not monitored or enforced by the USPTO.

Your failure to monitor your trademark's use can result in the loss of the mark's distinctiveness, which can call into question your claim of exclusivity with respect to the mark. In some cases, if you do not diligently monitor and enforce your rights, the USPTO can deem the mark abandoned and strip you of your rights.

Because trademark monitoring can be a full-time job, you can pay for trademark infringement monitoring services to reduce the time and stress involved in constant policing of potential violations.

What Is Trademark Infringement?

According to the USPTO, trademark infringement is the unauthorized use of a trademark or service in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistakes about the source of the goods and/or services.

For example, infringement may occur when counterfeit goods are created, or a company's logo is printed on products without that company's permission. Even a similar company name can be problematic. When a trademark is violated—or "infringed upon"—you can (and must) take immediate action to protect your mark.

Cease and Desist Letters

The first step most trademark holders take when they believe their mark is being infringed upon is to have an attorney send a cease and desist letter. The letter explains why you believe the violator is misusing your trademark, and possible consequences if the violator continues to use the mark.

If the cease and desist letter cause the violator to discontinue the unauthorized use of the trademark, no further action is necessary. However, cease and desist letters are not always effective.

Civil Action for Trademark Infringement

If a trademark violator (known in court proceedings as the "defendant") continues to use the trademark even after receiving a cease and desist letter, you as the trademark holder (the "plaintiff") may decide that it's time to up the ante and file a civil lawsuit—typically in federal court—for trademark infringement.

In a trademark infringement action, the plaintiff bears the burden of establishing the following elements:

  • You own a valid, protectable name, word, phrase, symbol, design, image, product label, logo, or slogan (i.e., the "mark").
  • Your rights to the trademark are "senior" to the defendant's.
  • The defendant had access to the trademark and used, reproduced, or sold it in commerce in connection with the advertising or sale of goods and/or services without your consent or permission in a manner likely to confuse ordinary consumers as to the source, sponsorship, affiliation, or approval of the goods and/or services.
  • As a result of the infringement, the defendant caused (monetary) damages to the plaintiff.
  • No exceptions exist that allow unapproved use of the trademark.

What Are the Available Remedies and Penalties?

If you are successful in proving that the defendant infringed upon your trademark, available federal remedies may include:

  • Court order (injunction) commanding the defendant to stop using your trademark.
  • Court order requiring the destruction or forfeiture of infringing articles.
  • Monetary relief, including defendant's profits, any actual or statutory damages you sustained, and the costs of the action.
  • In certain cases (such as a showing of bad faith by the defendant), a court order requiring the defendant to pay your attorneys' fees.

Possible Criminal Penalties

Although most trademark infringement cases are handled in civil court, in some cases, the conduct is so egregious that federal criminal charges are brought against the violator.

In the case of severe trademark infringement violations—for example, when a violator uses a trademark to sell counterfeit goods in violation of the United States Anticounterfeiting Consumer Protection Act of 1996 (the Lanham Act), or willfully violates trademark law—the violator may face felony charges and related criminal penalties such as probation or even incarceration.

This portion of the site is for informational purposes only. The content is not legal advice. The statements and opinions are the expression of author, not LegalZoom, and have not been evaluated by LegalZoom for accuracy, completeness, or changes in the law.

Protect your brand.

Register my trademark now