By owning trademarks and/or copyrights—different types of intellectual property—the owner is granted a variety of rights. One of those is the right to exclude others from using your intellectual property without your permission or authorization. 

When someone uses your intellectual property without your permission or authorization, that is basic infringement. However, there are many types of infringement and recovery available depending on the type of intellectual property and the extent of your protection. 

As an initial matter, and as stated in a previous post, the ability to recover depends on the extent of protection the owner has on his/her trademark or copyright. In terms of copyrights, for example, you need to register your copyright in order to pursue an infringement action in a federal court. 

Types of Infringement – Trademarks

Some of the purposes of trademarks and trademark protection are distinguishing between sources of goods or services of different parties, protecting the public from confusion, and incentivizing quality.

For trademarks, there are different types of infringement. Strict liability infringement involves confusion-based infringement. For someone to be liable for confusion-based infringement, they typically must have used the trademark (or some copy, colorable imitation, or reproduction) in commerce—for goods or services—in a way that likely confuses, deceives, or creates false designation of origin. Note that the infringer does not have to use an exact copy of the mark. 

Courts typically look at a variety of factors to determine whether the infringing use of the mark (or some imitation of the mark) is likely to cause confusion. Each circuit has determined its own set of factors to analyze.

Those factors could include analyzing:

 • The strength of the mark (conceptual and commercial strength)

 • The similarity of the two marks (the proper mark and the infringing mark) or the similarity of the products/services

 • The likelihood of the trademark owner “bridging the gap” (i.e. likelihood of expansion or how likely the mark owner will transition to similar product lines as the infringing use), consumer sophistication/care, actual confusion, bad faith, or marketing channels.

Types of “confusion” include point of sale confusion (typical confusion situation), initial interest confusion, post-sale confusion, and reverse confusion. Point of sale confusion involves the consumer being confused about the source of the goods or services at the point of the sale.

Initial interest confusion involves using the owner’s mark to lure consumers into the third party’s goods or services.

Post-sale confusion does not confuse the consumer but confuses the public observing the consumers. For example, consumers purchasing fake Rolex watches from a guy on the street know they are purchasing fake Rolexs (they are not confused by the infringing use of the Rolex mark), but the public later observing the consumer and the inferior quality of the fake Rolex may be confused by the use of the mark.

Reverse confusion involves a junior (later) user of a trademark becoming so large that its use of the trademark suggests that it is the mark owner.

Trademark infringement can also include contributory infringement (i.e., inducing another to infringe) or dilution/blurring/tarnishment (i.e., using a famous mark either on completely unrelated goods/services or related to unsavory/unwholesome goods or services).

Types of Infringement – Copyrights

Holders of a copyright are granted a bundle of rights, such as the ability to reproduce the copyrighted work, prepare derivative works, distribute copies, perform the work, and/or display the work. Others do not have the right to participate in any of these activities without the consent of the copyright holder. Participating without consent would infringe upon the holder’s rights.

Copyright infringement can be separated into direct infringement and indirect infringement. 

Direct infringement requires some element of volition or causation. Specifically, an infringement by copying requires three elements to prove. Those elements are actual copying, substantial similarity, and the creation of a fixed copy. Actual copying can be proven by direct evidence (citations or testimonial evidence of copying) or indirect/circumstantial evidence (inferred through showing access to the original work or based on a “striking similarity” to infer as a matter of law that it was copied).

Substantial similarity looks to the ordinary observer versus special observer test or overall impressions versus dissection of protected elements test. The requirement to have copyright protection or the creation of a fixed copy requires that the copy must be fixed in a tangible medium. 

Indirect infringement includes vicarious infringement, contributory infringement, or inducement. Vicarious infringement occurs when someone has the right and ability to supervise or control the actual infringer and that someone directly benefits from the infringer’s actions financially. Contributory infringement occurs when someone has knowledge of the actual infringement—and there is some inducement or material contribution to the infringement. Inducement occurs when there is some promotion to infringe by clear steps to foster such infringement. 

What Can Be Done If Someone Is Infringing?

Now that different types of infringement have been generally discussed, what options do trademark or copyright owners have when they think someone is infringing on their rights?

Please note that determining whether infringement has indeed occurred requires often intense fact-based analyses. It should also be noted that there are many defenses to both trademark and copyright infringements that the alleged infringer could raise. 

The first and often fairly inexpensive option would be to send the alleged infringer a cease and desist/demand letter prepared by an intellectual property attorney. These letters often set forth the owner’s position, claim of right to the trademark or copyright, basis in requesting the alleged infringer to cease the potentially infringing actions and potential liabilities that the alleged infringer could face if they do not cease and desist their actions. These letters could potentially lead to complete resolution, or they could lead to potential licensing or other monetizing opportunity discussions. 

If the demand letter does not resolve the issue, judicial proceedings could be an option. As discussed above, these measures may be limited by whether the intellectual property is registered or not. The owner’s availability of venue and amount of damages also depends on whether or not the trademark or copyright is registered. These possibilities should always be discussed with an intellectual property attorney prior to pursuing any remedies. 

In conclusion, someone potentially infringing your trademark or copyright can be a scary and nerve-wracking situation. These property rights are often products of a lot of money and effort, and owners are wanting and willing to protect the rights to nearly any extent. 

Contact Counxel Legal Firm

If you own a trademark and/or copyright and think that someone may be infringing those rights, contact Counxel Legal Firm to determine the best way to further protect your hard-earned rights. 

This article is intended for informational purposes only and does not constitute legal advice for your specific situation. Use of and access to this article does not create an attorney-client relationship between you and Counxel Legal Firm. Please contact or 480-536-6122 to request specific information for your situation.

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