Intellectual Property Protection


Scope of Protection

Trademark law protects an owner's right to use marks that distinguish its goods or services from others and to prevent others from using marks that are likely to cause confusion. In particular, trademarks symbolize the goodwill associated with particular products and the businesses for which the marks are used. Trademark law protects this goodwill and consumers' ability to accurately ascertain the source of goods and services.

Trademark rights at common law are established by using the mark in trade. The first user of a distinctive mark generally has superior rights to any later users. Trademark rights are established in connection with specific goods and services and the scope of rights extends only to markets and geographic areas in which the mark is used. Thus similar marks may coexist if the marks are used in remote territories or in connection with unrelated products.


A trademark owner may file an application to register its mark under either state or federal law, or both. Under federal law, the U.S. Patent and Trademark Office ("USPTO") provides two trademark registers, the Principal Register (for distinctive marks based on use or intent to use) and the Supplemental Register (for terms that are capable of distinguishing an applicant's products but are not registrable on the Principal Register because they are not inherently distinctive and lack acquired distinctiveness).

While, as noted, common law ownership rights in a mark are established by using the mark in commerce, registration on the Principal Register offers several procedural and remedial advantages:

  • Registration provides nationwide constructive notice of registrant's claim of ownership. 15 U.S.C. §1072.
  • Registration establishes jurisdiction in federal court to sue trademark infringers, regardless of the amount in controversy or the diversity of citizenship. 15 U.S.C. §1121.
  • Registration is prima facie evidence of the validity of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the mark in commerce. 15 U.S.C. §1057(b), §1115(a). These presumptions become conclusive for the most part when the registration is made "incontestable" under 15 U.S.C. §1065.
  • Owners of registered marks are eligible for increased damages and attorneys' fees in successful infringement actions. 15 U.S.C. §1117 (federal registration gives the court authority to increase the damages award beyond actual damages, up to three time the amount).
  • Registration may be recorded with the U.S. Customs Service to prevent importation of goods bearing a mark which copies the registered trademark. 15 U.S.C. §1124.


The test for trademark infringement is whether the defendant's use of a mark is likely to cause confusion, i.e., whether an appreciable number of reasonably prudent consumers are likely to be confused or deceived as to the source, affiliation or sponsorship of the parties and their goods and services. The plaintiff need not demonstrate actual confusion or intent to confuse. The likelihood-of-confusion analysis encompasses an evaluation of a variety of interconnected market factors, relating to the likely expectation, perception and memory of consumers.

Courts have established a number of factors to consider in determining whether a likelihood of confusion exists, including, the strength of plaintiff's mark; the proximity of the products in the marketplace; similarity of the marks in sound, appearance and meaning; evidence of actual confusion; marketing channels used; types of products and degree of care likely to be exercised by the purchaser; defendant's intent in selecting the mark; and likelihood of expansion of the product lines.

Remedies for trademark infringement include injunctions, monetary relief (including profits, damages and costs), attorneys' fees and destruction of infringing materials.

  • Preliminary and Permanent Injunction : 15 U.S.C. §1116. Injunctive relief is the preferred remedy in trademark infringement cases. In determining the appropriateness and scope of the injunction, and in balancing the equities of the parties, a court may resolve any doubt in favor of the senior trademark holder.
  • Monetary Relief : 15 U.S.C. §1117(a). The court may award plaintiff, subject to the principles of equity, "(1) defendant's profits, (2) damages sustained by the plaintiff and (3) the costs of the action." Harm to the plaintiff, in the form of lost sales and injury to reputation and goodwill is often difficult to prove and quantify. The plaintiff must demonstrate that, but for the defendant's infringing activities, the plaintiff would have made the sales. Also, "in assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount." Id . Damages are to function as compensation to the plaintiff, not a penalty to the defendant.
  • Attorneys' Fees : 15 U.S.C. §1117. "The court, in exceptional circumstances may award reasonable attorney fees to the prevailing party." "Exceptional" cases usually involve infringement which is malicious, fraudulent, deliberate or willful.
  • Enhanced damages for use of counterfeit marks : 15 U.S.C. §1117(b). A counterfeit mark is one which is substantially indistinguishable from a registered mark. "[U]nless the court finds extenuating circumstances," the court shall award the plaintiff treble damages.
  • Destruction of infringing articles : 15 U.S.C. §1118. "[T]he court may order that all [infringing] labels, signs, prints, packages, wrappers, receptacles and advertisements in the possession of the defendant . . . be delivered up and destroyed."


The federal dilution statute was enacted relatively recently and became effective in February 1996. The dilution statute provides that "[t]he owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark." 15 U.S.C. §1125(c).

"The term 'dilution' means the lessening of the capacity of a famous mark to identify and distinguish [products]." 15 U.S.C. §1127 Dilution does not require showings of likelihood of confusion or competition between the parties. Id. Rather, dilution encompasses claims of "blurring" and "tarnishment." Blurring occurs when the defendant's use of a mark whittles away, or dilutes, the strong association consumers have between a famous mark and the plaintiff's goods or services. (HYATT Hotels diluted by HYATT Legal Services.) Tarnishment occurs when defendant's use of a mark places plaintiff's mark in a bad light, unwholesome context or context out of keeping with plaintiff's high quality image (ENJOY COCAINE tarnished Coca-Cola's ENJOY COCA-COLA).

In a federal dilution action, "the owner of the famous mark shall be entitled only to injunctive relief unless the person against whom the injunction is sought willfully intended to trade on the owner's reputation or to cause dilution of the famous mark. If such willful intent is proven, the owner of the famous mark shall also be entitled to" defendant's profits, plaintiff's actual damages and attorneys' fees, as are available for trademark infringement. 15 U.S.C. §1125(c)(2).


Scope of Protection

Copyright is the right to prevent others from copying a work of authorship. "Copyright protection subsists . . . in original works of authorship fixed in any tangible medium of expression." 17 U.S.C. §102(a) (emphasis added). To be "original" a work must have been independently created by the author (not copied from a previous work) and must exhibit some minimal degree of creativity. A work is "fixed" if it is in a sufficiently permanent, tangible medium from which the work "can be perceived, reproduced, or otherwise communicated." Id.

The owner of a copyright enjoys a number of exclusive rights. The Copyright Act enumerates the following:

  • The right "to reproduce the copyrighted work."
  • The right "to prepare derivative works based upon the copyrighted work."
  • The right "to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership."
  • The right "to perform the copyrighted work publicly."
  • The right "to display the copyrighted work publicly."

17 U.S.C. §106.


A copyright owner can register his or her copyright in the U.S. Copyright Office at any time during the term of the copyright protection. While copyright protection arises immediately upon the creation and fixation of a copyrightable work, registration offers a number of benefits:

  • Domestic copyright owners must register their copyright prior to filing a copyright infringement suit, though it is not necessary that the mark have been registered before the infringing activities began. 17 U.S.C. §411.
  • Statutory damages and attorneys' fees are available only for infringement which occurs after the effective date of registration. 17 U.S.C. §412.
  • A certificate of registration, obtained before or within 5 years after publication of the work, constitutes prima facie evidence of the validity of the copyright. 17 U.S.C. §410(c).


"Anyone who violates any of the exclusive rights of the copyright owner . . . or who imports copies or phonorecords into the U.S. in violation of §602 . . . is an infringer of the copyright." 17 U.S.C. §501. Further, "[i]mportation into the U.S., without the authority of the owner of the copyright . . . of copies or phonorecords of a work that have been acquired outside the U.S. is an infringement." 17 U.S.C. §602. In addition to direct infringement, courts recognize claims for vicarious and contributory infringement.

A copyright is infringed if the defendant copied from the plaintiff's copyrighted work, subject to certain exceptions. A plaintiff can prove copying through direct evidence of copying, or circumstantial evidence that the defendant had access to the plaintiff's work and the defendant's work is substantially similar to the plaintiff's. Two works are "substantially similar" if an ordinary observer would overlook the differences and regard the aesthetic appeal of the two works as the same. Defendant's intent is not a defense.

Not all copying in actionable. A major defense to a claim of copyright infringement is "fair use." 17 U.S.C. §107. "In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include - (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and, (4) the effect of the use upon the potential market for or value of the copyrighted work." Id. Courts balance these four factors in light of the specific facts of each case. News reporting, parodies and educational activities are often, albeit not always, shielded by the fair use defense, and are subject to the four-part balancing test.

Other defenses include (i) copyright invalidity; (ii) copyright misuse, such as anticompetitive practices in connection with the licensing of copyrighted works; and (iii) the merger doctrine, which applies when there is only one or a limited number of ways to adequately express the underlying idea.

The remedies available for copyright infringement include injunctions, damages, attorneys' fees and costs, and impoundment or destruction of infringing materials.

  • Injunction : 17 U.S.C. §502. "Any court having jurisdiction . . . [may] grant temporary and final injunctions on such terms as it may deem reasonable to prevent or restrain infringement of a copyright."
  • Damages : 17 U.S.C. §504. "[A]n infringer of copyright is liable for either - (1) the copyright owner's actual damages and any additional profits of the infringer . . .; or (2) statutory damages." The copyright owner is entitled to "the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement."
  • Statutory damages : 17 U.S.C. §504(c). In lieu of actual damages, the copyright holder can elect to receive statutory damages which are equal to "a sum of not less than $500 or more than $20,000 as the court considers just" for all infringements involved in the action. Id. If the court finds the infringement willful, it can award up to $100,000 in statutory damages. (Statutory damages are not available if the work was not registered prior to the infringing activity.)
  • Attorneys' fees : 17 U.S.C. §505. "[T]he court in its discretion may allow the recovery of full costs," and "a reasonable attorney's fee to the prevailing party as part of the costs."
  • Impounding infringing articles : 17 U.S.C. §503. Pending the outcome of litigation, "the court may order the impounding, on such terms as it may deem reasonable," of all articles claimed to be infringing. Further, "the court may order the destruction or other reasonable disposition" of all infringing articles.