Trademark Infringement: Case Studies and Legal Strategies

Trademark infringement disputes can present risks for both parties. For trademark owners, failure to effectively prove infringement can lead to loss of brand value, loss of goodwill and potentially even loss of their exclusive rights. For alleged infringers, failure to effectively defend against the allegations at hand can lead to substantial liability and the need to re-brand. With this in mind, what do you need to know if you are facing potential trademark infringement litigation? Here are some insights from an experienced Florida trademark attorney.

Famous Trademark Infringement Cases

To illustrate the potential risks involved in trademark infringement litigation, we can take a look at some of the most high-profile cases in recent history:

Apple Inc. v. Apple Corps

Today, it doesn’t get much bigger than Apple, but 60 years ago it didn’t get much bigger than The Beatles. About halfway in between then and now, we saw one of the most notable trademark infringement disputes in history when Apple Corps, which represented The Beatles, sued up-and-coming Apple Inc.

As a result of the lawsuit, Apple Inc. agreed not to use its trademark to sell music or music-related services. But, a couple of decades later, Apple Inc. did exactly that after launching iTunes in 2003. Apple Corps sued again, but this time, it lost—with the court finding that it had not presented adequate evidence of a likelihood of confusion.

Chanel v. Huawei Technologies

In 2017, fashion brand Chanel sued the Chinese technology giant Huawei Technologies for trademark infringement, alleging that Huawei’s logo (which consists in part of two interlocking and opposing “U”s) infringed Chanel’s famous trademark (which consists in part of two interlocking and opposing “C”s). After nearly two years of litigation, Huawei prevailed—with the court finding that the marks were not sufficiently similar to cause a likelihood of confusion.

Starbucks v. Star Box

In 2016, Starbucks sued a company to stop the use of its claimed Star Box Coffee trademark. Along with the similarity in name, the claimed Star Box Coffee trademark also consisted of concentric green circles with white lettering and stars, plus a design featuring wavy lines, a crown and a star in the middle—all prominent features of the famous Starbucks logo.

While Star Box Coffee claimed that it had no intention of imitating Starbucks’s trademark, it ultimately agreed to change its branding before trial.

Legal Strategies for Pursuing a Trademark Infringement Claim

So, let’s say that you are considering pursuing a trademark infringement claim. You believe that a competitor is using a confusingly similar mark in commerce, and you believe that its use is having a detrimental impact on both the value of your company’s trademark and your company’s bottom line. What should you do? Here are some key preliminary considerations:

• Ensure that Your Company Has Priority – One of the first steps to take when considering a trademark infringement claim is to ensure that your company’s trademark has priority. If the alleged infringer has prior rights, you do not want to argue that the marks in question are confusingly similar or that the alleged infringer’s products or services may bridge the gap to compete with your company’s offerings. Likewise, a court is unlikely to find that the marks are confusingly similar (as in the Chanel case) or being used to market similar goods or services (as in the second Apple Inc. case), then an infringement claim may not be warranted.
• Take Decisive Legal Action Promptly – If your company is going to take legal action against trademark infringement, it should take decisive action promptly. Not only can unnecessary delays lead to additional brand devaluation and commercial losses, but they can also limit access to judicial remedies in some cases.
• Preserve Any Evidence of Actual Confusion – In many trademark infringement cases, a key question is whether there is any actual confusion in the marketplace. With this in mind, if you have any evidence of actual confusion—whether a social media post, a customer complaint, a letter from a retailer or anything else—you should be sure to preserve it for use in the litigation if necessary.

Legal Strategies for Defending Against Trademark Infringement Allegations

Now, let’s say you are on the other side. Your company has received a cease-and-desist letter that threatens litigation if your company does not stop using its trademark immediately. What should you do in this scenario? Here are some examples of potential defense strategies:

• Challenge the Validity of the Plaintiff’s Trademark – One option may be to challenge the validity of the plaintiff’s trademark. There are various grounds for doing so, though the grounds that are available in any particular case (if any) will depend on the specific facts and circumstances involved.
• Challenge the Reasonableness of Any Claim of Actual Confusion – Another option may be to challenge the reasonableness of any claim of actual confusion. If the marks in question are sufficiently different, or if they are used to sell non-competing goods or services, then it may not be reasonable to claim likelihood of confusion. Many times evidence purporting to show actual confusion is in fact evidence that there is no confusion. For example e-mails or social media posts that alert a trademark owner that someone else is using its trademark actually show that the reporting party knows the mark is being used by someone other than the owner and therefore show lack of confusion.  
• Dispute the Plaintiff’s Allegations of Similarity or Competition (or Both) – Even when two companies’ trademarks are arguably (or even unquestionably) similar, if there is no real risk of confusion in the marketplace, then a finding of infringement is unwarranted. This could be if either (i) the marks are not so similar that they are likely to cause confusion, or (ii) the companies are not in direct competition. The simple fact that two companies have adopted similar or identical trademarks is not enough, on its own, to establish a claim for trademark infringement.

Speak with a Florida Trademark Attorney at Lott & Fischer

If you have questions about filing or defending against a trademark infringement claim, we encourage you to contact us promptly. We have decades of experience successfully representing parties on both sides of complex trademark infringement disputes nationwide. To speak with an experienced Florida trademark attorney at Lott & Fischer in confidence, please call 305-448-7089 or tell us how we can get in touch online today.