How to Avoid Trademark Infringement

Clients often ask us how they can avoid trademark infringement when selecting a brand identity and selling products. Avoiding trademark infringement is actually fairly easy. All it takes is a little work on the front end to avoid numerous potential problems on the back end.

Trademark infringement frequently occurs when a new business fails to obtain a trademark clearance before it settles on a name and begins selling products or services under that name. A trademark clearance is intended to identify any outstanding trademarks, whether those marks are registered with the United States Patent and Trademark Office or used in commerce, that may pose a risk to the successful registration or use of the business’s trademark. A trademark clearance is a small investment that can help a business avoid expenses later on, such as a trademark infringement lawsuit or responding to a trademark infringement threat letter.

Once a trademark clearance has been performed, businesses can avoid claims of trademark infringement by using competitors’ trademarks in a fair manner. When bidding on keyword advertising, businesses should avoid displaying a competitor’s trademark in the ad text of their ads. When advertising in more traditional mediums, businesses should only use competitors’ trademarks in a nominative fair use sense, that is, to fairly name the product for the purposes of comparative advertising. It is always wise to consult with a trademark attorney before using a competitor’s trademark.

Understanding the Legal Standard for Trademark Infringement

Trademark infringement under the Lanham Act, 15 U.S.C. § 1114, occurs when a person uses a mark in commerce that is identical or confusingly similar to a registered trademark, without the consent of the registrant, in a way that is likely to cause consumer confusion. The legal standard—likelihood of confusion—is assessed using a multi-factor test. Federal courts in the Sixth Circuit, which covers Michigan, apply the factors from Frisch’s Restaurants, Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642 (6th Cir. 1982):

• Strength of the plaintiff’s mark;
• Relatedness of the goods or services;
• Similarity of the marks;
• Evidence of actual confusion;
• Marketing channels used;
• Likely degree of purchaser care;
• Defendant’s intent in selecting the mark; and
• Likelihood of expansion of the product lines.

Understanding this framework is essential for businesses that want to avoid infringement. The test is fact-specific—a mark that is clearly infringing in one context may not be infringing in a different industry or geographic market. A trademark attorney can analyze these factors for your specific situation and give you an informed assessment of your risk.

Step 1: Conduct a Trademark Clearance Search

The most effective way to avoid trademark infringement is to conduct a thorough clearance search before adopting a new brand name, logo, or slogan. A proper clearance search includes:

• USPTO TESS database search: The USPTO’s Trademark Electronic Search System contains all federally registered marks and pending applications. A search should cover not just identical marks but also phonetically similar marks, marks with similar meanings, and design marks in related classes.
• Common law search: Many trademark owners have enforceable rights based on actual use in commerce even without federal registration. A common law search examines business name databases, state trademark registries, domain name registrations, social media profiles, and commercial databases to identify unregistered but potentially senior marks.
• International search: For businesses that operate or plan to expand internationally, searching the trademark databases of the relevant countries is essential to avoid conflicts abroad.

Step 2: Register Your Trademark

Once a clearance search confirms that your proposed mark is available, filing a federal trademark application with the USPTO is the next step. Registration provides nationwide constructive notice of your rights—meaning that no one who adopts your mark after the application filing date can claim innocent infringement, even if they were not aware of your mark. This is a powerful deterrent against future infringement.

Federal registration also gives you the right to use the ® symbol, which puts competitors on actual notice that your mark is registered and that use of a confusingly similar mark in commerce may expose them to significant liability. Registered trademark owners are entitled to pursue claims in federal court, seek statutory damages, and request that U.S. Customs block the importation of infringing goods.

Step 3: Use Competitors’ Marks Carefully

Even after you have selected and registered your own trademark, the risk of infringement is not over. Using a competitor’s trademark in your own advertising without authorization is a common source of infringement claims. The two primary scenarios to be aware of are:

Keyword advertising: Bidding on a competitor’s trademark as a keyword in Google Ads or other search advertising platforms is generally permissible, but displaying the competitor’s trademark in the text of your ad is not. Courts have found that using a competitor’s mark in ad text creates a likelihood of confusion about the sponsorship or affiliation of the advertised goods or services.

Nominative fair use: You may use a competitor’s trademark to identify the competitor’s product in comparative advertising—for example, stating that your product is “compatible with” a named brand—as long as the use is nominative and not likely to suggest endorsement or sponsorship by the mark owner. The nominative fair use doctrine, articulated in New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302 (9th Cir. 1992), requires that the product not be readily identifiable without using the mark, that only as much of the mark is used as necessary to identify the product, and that nothing is done to suggest endorsement or sponsorship.

Contact the trademark attorneys at Revision Legal today. Whether you are selecting a new brand, assessing the risk of an existing mark, or responding to an infringement claim, we are here to help you navigate the trademark landscape with confidence.

Responding to Trademark Infringement Claims

Even businesses that have done everything right—conducting a clearance search, registering their mark, and using it properly—may receive a cease and desist letter alleging trademark infringement. Responding to a trademark infringement claim requires careful analysis of the claim’s legal merit, the strength of your available defenses, and the practical business consequences of fighting or settling the dispute. A cease and desist letter from a well-funded competitor should not be ignored, but it also should not automatically be treated as a valid legal demand requiring immediate compliance.

Our trademark attorneys evaluate infringement claims against clients by applying the same likelihood of confusion analysis that a court would apply. In many cases, the claim is overstated, the marks are not actually confusingly similar under the applicable legal standard, or our client has priority rights that the claimant has overlooked. Where a claim has merit, we negotiate settlements that minimize disruption to our client’s business. Where a claim lacks merit, we respond aggressively to protect our client’s right to use their mark. Contact Revision Legal today if you have received a trademark infringement demand letter.

Proper trademark use in your own advertising and marketing also matters for maintaining the strength of your mark. Always use your trademark as an adjective modifying a generic noun—for example, “BAND-AID brand adhesive bandages” rather than simply “Band-Aid.” Use the appropriate trademark designation: ® for registered marks and ™ for unregistered marks. Consistent, correct use of your trademark reinforces its function as a source identifier and guards against the loss of trademark rights through genericide. Our trademark attorneys advise clients on proper trademark use in advertising, marketing, and licensing to maximize the strength and enforceability of their marks.