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Imitation might be the sincerest form of flattery — but when it comes to trademark law, it can land you in legal hot water if you’re not careful. Whether you’re a fashion designer, graphic designer, or your company works with a creative team to develop new products, it’s crucial to be aware of the fine line between inspiration and infringement. While inspired designs can boost your business and bottom line, infringed-upon designs can result in a lawsuit. Dealing with a design infringement claim isn’t only time-consuming and costly, but it can also harm your company’s reputation among consumers.
Every designer seeks inspiration from other sources. However, whether a design has been “inspired” by another source lends itself to the question of whether their new design has been changed enough to be considered “original,” instead of “derived.” In making this determination, it must be determined whether the trademarkable elements of both designs are “substantially similar.” This can be done by looking at the designs side-by-side and comparing them.
It can sometimes be difficult to ascertain the outcome of a design infringement claim in advance since designers and judges often have differing views as to what constitutes a substantial similarity. Importantly, design infringement occurs when a person or company uses a trademark without authorization in a way that would be likely to confuse or deceive consumers regarding the source of the product.
Notably, when it comes to “inspired-by” designs in jewelry, trademark issues usually arise in connection with a particular “trade dress.” Trade dress can include the overall appearance of a product’s dressing or packaging, in addition to the design of a product itself. Courts will consider the “total impression” of a product when it comes to determining whether trade dress has been infringed upon.
To prevail in a claim for trade dress infringement, a plaintiff must prove (1) the design is nonfunctional and (2) the design is distinctive or has acquired a secondary meaning before the alleged infringer entered the marketplace. In other words, it must be shown that the design serves no useful purpose. Additionally, the combined elements must identify the plaintiff’s brand as its source and the general public must identify the specific design with the brand.
Parody imitates an original work in a humorous or irreverent manner. Since there would be no likelihood of confusion among consumers, “parody” is a statutory defense to dilution claims recognized under trademark law. Unlike with dilution claims, there is no automatic parody defense for infringement claims codified by statute. However, it can still be asserted as a defense to trademark infringement under the right circumstances.
While a parody is a humorous take or a spoof of an original design, it is not meant to be purported as the original — or even taken seriously. Nevertheless, it must be clear that the parody design is not associated with the original design to avoid infringement.
In order to successfully defend a trademark infringement or dilution claim involving a parody, certain elements must be met, including the following:
Parody cannot be used as a defense in the event a defendant attempts to capitalize on a famous mark for their own use. A defense will also not be successful if an actual likelihood of confusion exists between the parody and the original.
A design trademark infringement lawsuit can have a substantial economic impact on your business. The Lanham Act allows a prevailing plaintiff to recover several categories of damages in these cases. Not only can actual damages be recovered, but they may also be entitled to disgorgement of the defendant’s profits and attorney’s fees in exceptional cases. Courts have a considerable amount of discretion in determining what award is appropriate.
Actual damages are also known as compensatory damages — this is the amount of monetary loss suffered by the plaintiff. This type of damages can be established through evidence of diverted sales. Disgorgement of profits is an equitable remedy in design infringement cases that require an accounting of the profits the defendant made as a result of the design infringement. The purpose of this award is to prevent the defendant from being unjustly enriched by their infringing activity.
If you’re a designer, it’s crucial to know how to avoid inadvertent trademark infringement. At the Trademark Lawyer Law Firm, PLLC, we are committed to providing knowledgeable counsel regarding trademark matters, including infringement cases. Located in Ann Arbor, Michigan, our attorneys work with designers, entrepreneurs, and business owners throughout the country. Contact us today to schedule a free 15-minute consultation.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
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