This article originally appeared as a Gavel to Gavel guest column in the Journal Record on Jan. 23, 2025.
If you own a business, you may already have trademark rights. Although formally registering your trademark through the U.S. Patent and Trademark Office provides you with additional benefits, many don’t realize that simply using a mark in commerce can be enough to give you a right in that mark.
Trademark rights are not just vital to preserving brand identity and customer loyalty by preventing competitors from profiting from your hard work, they can immediately add value to your business. For example, Coca-Cola’s brand, alone, is valued at about four years’ worth of its gross profits.
Contrary to what most think, trademarks encompass more than just a word or logo. Anything that identifies the source of a good or service qualifies. Examples include:
– Product packaging, like the “Tiffany Blue” color for jewelry or the overall “feel” of a store, like a Taco Cabana (Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992)).
– Product design, like the design of a child’s dress (Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S. 205 (2000)).
– Sounds, like Southwest Airline’s “Clap Clap Ding” (TM No. 86481048) or NBC’s chimes (TM No. 72349496)
– Smells and tastes—if they don’t serve a function other than source identification (much less common, but still possible)
Trademark Infringement
A party infringes on another’s trademark when the party’s mark creates a “likelihood of confusion” as to the source of the goods. The marks do not need to be identical—only confusingly similar.
Every federal circuit court considers different factors to determine if an alleged infringer’s mark creates a likelihood of confusion, but they are largely similar. The Tenth Circuit (which includes Oklahoma) considers six factors:
- The degree of similarity between the marks;
- The intent of the alleged infringer in adopting its mark;
- Evidence of actual confusion;
- The similarity of the products, consumers, and channels where the goods are sold;
- The degree of care likely to be exercised by purchasers; and
- The commercial and conceptual strength of the marks.
Trademark Remedies
Finally, if you prove infringement, you are entitled to remedies. Most common is an injunction to require the infringing party to stop using the confusingly similar mark; but this is not the only remedy. The Lanham Act (which governs all things trademarks) provides many remedies, including:
- Enjoining the infringing party from using the confusingly similar mark;
- Lost profits;
- Disgorgement of the infringing party’s profits;
- A reasonable royalty reflecting what the infringing party should have paid for use of the mark; and
- In rarer circumstances, up to treble damages and attorney’s fees.
As your business expands, make sure to maximize the value of your trademarks through federal registration, and when a potential infringer arises, ensure you have a knowledgeable IP attorney in your corner to recover the damages you are owed.
About the author:
Nick J Candido is a litigation attorney at the law firm of Phillips Murrah who represents individuals and both privately held and public companies in a wide range of civil litigation and intellectual property matters.
CONTACT: njcandido@phillipsmurrah.com | 405.606.4768.
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