Trademarks are crucial assets for businesses, representing years of brand building and customer loyalty. However, trademarks require active monitoring and protection.
Infringement can erode a brand’s distinctiveness and unfairly leverage its reputation. A common question business owners ask is – what are some real-world examples of trademark infringement?
In this article, we’ll overview some famous cases and identify common infringing activities to watch out for.
Well-Known Infringement Lawsuits
Several high-profile lawsuits showcase trademark infringement in action. These cases often involve luxury brands or entertainment properties defending their iconic marks.
Louis Vuitton v. Warner Bros.
In 2011, Louis Vuitton sued Warner Bros over a scene in The Hangover Part II featuring a knockoff version of LV’s classic monogrammed handbags. Louis Vuitton claimed the fake bag would confuse viewers and dilute its trademark. The judge ultimately rejected Louis Vuitton’s arguments, ruling that short-term satirical use in a movie scene did not cause infringement. However, companies should still be cautious about potentially infringing references to others’ trademarks.
Under Armour, Inc. v. Armorina, Inc.
Under Armour, a well-known sports apparel company, sued Armorina, a women’s activewear and lifestyle brand based in New York, for trademark infringement. Under Armour claimed that Armorina’s name and logo were too similar to its own, causing confusion among consumers. The jury found that Armorina began using its mark well after Under Armour became famous, and as a result, it was “likely to cause dilution of the Under Armour trademark.” The court issued an injunction barring Armorina from using that name but allowed the company to continue its business under a different name
Hermès Int’l v. Rothschild
This case involved a dispute over the use of Hermès’ trademarks by Mason Rothschild in his MetaBirkins NFTs. Hermès claimed that Rothschild’s use of the word “Birkin” and the design and iconography of the handbag in his NFTs infringed on their trademarks. The jury found Rothschild liable on all counts of trademark infringement, dilution, and cybersquatting and awarded Hermès approximately $133,000 in damages.
Adidas Am., Inc. v. Thom Browne, Inc.
Adidas sued Thom Browne for trademark infringement and dilution, claiming that the similarities between Browne’s various stripe patterns and Adidas’s three-stripe mark were too close. Adidas alleged that Thom Browne had encroached into direct competition with Adidas by offering sportswear and athletic-styled footwear. However, the jury found that Browne’s company was not liable for trademark infringement or dilution.
These examples showcase famous brands willing to litigate perceived infringement aggressively. For companies with fewer resources, proactive prevention is a wiser approach.
What Activities May Infringe Trademarks?
Beyond the well-known lawsuits above, trademark infringement can arise from many activities that cause consumer confusion or dilution.
Here are some examples we see:
- Using an identical or very similar mark for related products or services. If the marks and offerings are highly similar, infringement is likely.
- Making minor tweaks to a registered trademark and passing it off as your own. Even small changes may not suffice to avoid infringement if confusion results.
- Diluting the distinctiveness of a famous mark through blurring or tarnishment, even without direct competition between brands.
- Registering and using domain names is confusingly similar to others’ trademarks. Cybersquatting often provokes infringement claims.
- Making unauthorized use of third-party logos, brand names or taglines, especially for commercial purposes.
- Continuing use of a mark after receiving a proper cease and desist letter. This shows bad faith intent.
As you can see, infringement risks arise long before going to market. Trademark counsel can help spot issues in the naming and branding process.
What Are the Consequences of Infringement?
Trademark infringement carries serious consequences, including:
- Injunctions forcing the infringer to stop using the mark and any similar alternatives that cause confusion. This usually requires rebranding, at great cost.
- Monetary damages for actual losses and disgorgement of the infringer’s profits, which can total millions.
- Litigation fees averaging $120,000 to $750,000, borne by the losing party.
- Reputational harm with customers and the public from being labeled an infringer.
For willful and intentional infringement, enhanced and punitive damages may also apply. With so much at stake, prevention is critical.
Best Practices for Avoiding Infringement
Our trademark attorneys recommend several best practices to steer clear of infringement risks:
- Conduct trademark clearance searches before adopting any name or logo to identify similar registered marks. Search both federal and state databases and consider hiring a search firm for a comprehensive assessment.
- Perform periodic trademark watching to monitor new applications and registrations similar to your own marks. This allows policing potential infringement early.
- Register key trademarks with the U.S. Patent and Trademark Office and in relevant foreign jurisdictions. Registration establishes nationwide rights and constructive notice.
- Actively police trademarks through cease and desist letters and UDRP complaints against potential cybersquatters. Nipping infringement in the bud is far less costly than litigation.
- Seek expert counsel whenever potential infringement concerns arise or you receive complaints from others. Identifying infringement risks requires specific legal expertise.
- Purchase infringement liability insurance to help cover defense costs if issues develop. Having coverage provides valuable peace of mind.
With the right guidance and precautions, companies can avoid the headaches of infringement.
Protect Your Brand Value Through Proactive Trademark Diligence
Trademark infringement threatens hard-earned brand equity and can lead to serious liability. As the famous cases discussed show, even huge brands are not immune. By understanding what constitutes infringement and taking steps to avoid risks, companies can spare themselves significant headaches and costs down the road.
The NY trademark lawyers at The Browne Firm have deep experience advising on trademark selection, clearance, registration, and enforcement. They’re always happy to provide an initial consultation to assess a business’ trademark risks and needs. Reach out to The Browne Firm at https://www.thebrownefirm.com/ to discuss protecting your brand’s future. With smart counsel, you can avoid trademark infringement issues and enjoy greater confidence as your company grows.
