Mr. Punzalan reviewed the basics of Trademark Law then discussed the types of disputes which arise and related litigation issues. The presentation analyzed the foundational issue of the “likelihood of confusion” between two marks and the various factors that are considered. Additionally, defenses to trademark infringement and available damages for trademark infringement were discussed.
Some practical tips were:
- A trademark is protected from the moment of its first use in commerce, not necessarily the date of its USPTO registration.
- Although, Federal trademark registration is not required, it establishes the presumption of the mark’s validity and use.
- A trademark without registration may use the ™ sign but not the ®.
- Trademark litigation usually requires that the owner prove diligence in researching other uses of the same or similar mark before its adoption in the market.
- Defenses against the trademark infringement claim include:
- Fair Use (e.g. First Amendment artistic expression)
- Invalidity of the plaintiff’s mark
- Fraud upon the USPTO
This debrief was provided by Dariia Skrementova, SCU School of Law LL.M. Candidate 2017.