10. How is ownership of a mark enforced?

Whether or not a trademark is federally registered, its owner may go to court to prevent someone else from using it or a confusingly similar mark. Courts will examine such factors as:

• whether the trademark is being used on competing goods or services (goods or services compete if the sale of one is likely to preclude the sale of the other)

• whether consumers would likely be confused by the dual use of the trademark, and

• whether the trademark is being used in the same part of the country or is being distributed through the same channels.

If the mark is infringing and the mark’s owner can prove loss or show that the competitor gained economically as a result of the improper use, the competitor may have to pay the owner damages based on the profit or loss. If the court finds the competitor intentionally copied the owner’s trademark, the infringer may have to pay other damages, such as punitive damages, fines or attorney fees. On the other hand, if the trademark’s owner has not been damaged, a court has discretion to allow the competitor to also use the mark under very limited circumstances designed to avoid the possibility of consumer confusion.

In addition, under federal and state anti-dilution statutes, an owner may prevent a mark from being used by others (the essence of mark ownership) if:

• the mark is well known, and

• the later use would dilute the mark’s strength—that is, impair or tarnish its reputation for quality or render it common through overuse in different contexts (even if it is unlikely that any consumers would be confused by the second use).

  Related terms: attorney fees in trademark infringement actions; Bureau of Customs; contributory infringer; damages in trademark infringement cases; defendant’s profits; deliberate infringer; dilution of mark; federal trademark registration; infringement action; injunctions against infringement and unfair competition; innocent infringer; loss of mark; palming off; publishers of advertising matter; punitive damages; reverse palming off.