I am going to tell you how to avoid trademark infringement if you want to avoid trademark infringement or you want to reduce your chances of trademark infringement then you want to make sure of a couple of things now in this video I’m going to give you my three top tips if you want to avoid trademark infringement then number one you want to make sure that you are not using somebody else’s registered trademark so what exactly does that mean if you go onto the USPTO the United States patent and trademark office database you will be able to do a lookup for a name that you want to use for your business now if you see that that name is already taken after you’ve done a lookup then you definitely want to avoid using that name moving forward now using the trademark electronic search system may seem like a really simple thing to do but I want to make sure you watch this video right here which goes into a little little more depth when you’re doing a search of a particular name on that database the reason it’s a little bit more involved is because you will see live or dead you want to understand what that means before moving forward with the name that might be live or might be dead so check out that video right there but the most obvious way that people commit trademark infringement is by using a name that is already taken and so that is why I talk about tip number one making sure that you don’t use a name that is already taken because that is the most obvious way in which you can avoid trademark infringement now that isn’t the only way to avoid trademark infringement but part of understanding trademark infringement also means that you’re putting yourself in the shoes of the other person so if you are in the shoes of the other person the trademark holder in this case then you want to know what it is they would have to prove in order to show that you committed trademark infringement one of the factors that they would have to prove is that they own the trademark now if they own a registered trademark then this is relatively easy to prove if they are common law users of a trademark then they would have to prove that they are using the trademark within some geographical area it would also be important for the trademark owner to show that they did not give consent for you to use the confusingly similar trademark now that one might be a little bit easier to prove because if they don’t know you if you’ve never had Communications with them then how could they have ever given you consent but if you were ever involved in trademark litigation then just know that there is a multi-factor approach to proving confusion in the marketplace so analyzing a confusion issue also means that the court would look at certain factors and individually analyze and apply to the facts whether or not you actually have committed some kind of confusion issue some recent trademark cases involving trademark infringement are some that maybe you can relate to because you’ve heard the names before so in one case Adidas sued Forever 21.
Forever 21 is notorious for creating clothing that looks a little bit generic that could sometimes look like an off brand or an offshoot of a particular brand so in this case Forever 21 was using the three stripes that are notorious of the Adidas trademark and Adidas suit forever 21. another example of trademark infringement is the case involving 3M versus 3N so right off the bat that sounds like it could be confusingly similar right will 3M the company that is notoriously known for making Post-it notes and Scotch tape and other Office Products sued 3n for using a confusingly similar name that confused people in the marketplace in that case somebody registered 2011 oscars.com and the academy said no way that is confusingly similar to the Oscars that we put on how could you GoDaddy allow you know your users or how could you allow a consumer to purchase 2011 oscars.com and so in that case there was infringement and GoDaddy was liable although the court did say that GoDaddy did not have ill intent because they did not necessarily profit from the use of 2011 oscars.com maybe the consumer did but GoDaddy did not so maybe you’re asking yourself why is Marcella giving us these examples and the reason I am giving you these examples is because it’s very important for you to take into account very obvious names in the marketplace that are already taken that are already being used by someone so why would you go and register 3N if you know that 3M is already being used if you work in an office then that should be very clear to you because like I said 3M produces all sorts of office supplies that you probably see on a day-to-day basis now same with the Oscars example if you know that you’re registering a domain that someone else may find confusingly similar not only are you going to upset them but you could have set them to the point where they are willing to spend five years worth of attorney fees to fight you on the use of a domain which happened in that case now and also in the case of Adidas versus forever 21. we already know that Adidas owns those three stripes right so why would you go and create a product that has those three stripes so if you wanted to open a coffee shop that had a mermaid on it well I think you better think twice because Starbucks uses the mermaid if you wanted to start a shoe brand that also had red soles then you probably should think twice about that making that move and these examples don’t necessarily require you to go onto the trademark electronic search system and figure out that these things are already used because if you look around you chances are you would have seen them already now believe it or not I know that there are some of you out there
thinking well yes but if I just registered a particular domain maybe I could sell it in the future for a large lump sum and instead of thinking to yourself what is this worth in the future you should also be thinking how much could I lose in the future if I registered this domain so of course the job of a lawyer is always to analyze the situation and determine what the worst possible outcome could be but we tend to be pretty realistic about what the potential consequences could be so in these types of situations make sure that you’re as quick to jump to the possible downsides of registering domains that someone else could possibly want instead of just thinking oh I’m registering something that I know they’ll probably want in the future and maybe they will buy it from me believe it or not I have had some calls with some of you thinking that there is absolutely no downside to purchasing these types of domains so think twice now one very very very important thing to mention in this video is that committing trademark infringement is one thing and How likely you are to get sued over trademark infringement is a totally different thing there are companies out there with big bucks with Deep Pockets that definitely have a team that is put together specifically for the purpose of scouring the internet scouring websites, scouring social media to make sure that no one else is committing trademark infringement because if they do see a potential confusion then you guessed it you will probably be receiving a synthesis letter or an injunction notice or you might be receiving notice of a lawsuit but not everyone one has a team like this and not everyone is scaring the internet and not everyone is interested in suing every time ticker Harry so when you decide to start using a particular name or logo or slogan or tagline you can also be asking yourself the question How likely is this company to sue me because if we’re talking about companies like Adidas or like the ones that I mentioned in these examples then you can rest assured that more than likely you will be receiving some kind of notice but if we’re talking about smaller businesses smaller companies here maybe that don’t have deeper pockets or that just don’t have the manpower to scour the internet or that haven’t hired a third party to do this due diligence for them then the chances of you being sued could decrease and really it doesn’t matter if someone lacks a team or doesn’t like a team the fact of the matter is that you could still be committing trade work infringement and you still have to assess your risk in moving forward with a confusingly similar name knowing that you could still be sued at any time but wait there’s more so is it it possible that you could end up in a situation where you are using somebody else’s trademark and you don’t even know it you don’t know that it’s registered and belongs to someone else well yes there are situations like that but unfortunately that is not a defense and so you would still have to go through the analyzation of the trademark factors that we talked about and you would still have to analyze whether there’s confusion in the marketplace but but but if you are able to secure a trademark
registration for your mark even though it may be confusingly similar to someone else’s then you are definitely going to bolster your case.
So if you can acquire a trademark registration with the United States Patent Trademark Office and create a strong foundation for the future of your brand whether or not you foresee litigation that is a good place to be so create a strong Foundation by securing a registered trademark I have tons of videos in this playlist where I share so much trademark knowledge with you and in fact I even have a master class which you can sign up for and I will walk you through a trademark application scroll down into the description everything you ever want on it is in the description below including how to contact me personally so that I can help you file a trademark application or if you want to take a DIY course make sure you grab your spot I definitely want you to check out this video before locking up because it’s a great continuation to this video and if you want to say thanks Marcela for making these videos make sure you also scroll down and you swipe I’m going to show you right here where you can push the thanks button or send me an emoji and let me know this video was helpful
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