Marking Your Territory: Your Unregistered Trademark May Still be Protected by the Lanham Act

By January 8, 2013

By Terri Meyers and Josh Rubens
Trademarks include “any word, name, symbol, or device, or any combination thereof [used] to identify and distinguish [one’s] goods … from those manufactured or sold by others and to indicate the source of the goods.” 15 U.S.C. § 1127.  Many businesses use trademarks, such as names and logos, without registering them with the United States Patent and Trademark Office (USPTO).  However, whether registered or not, trademarks are protected under federal law.
Trademark protection is based upon use, not registration.  The subsequent use by a third party of a confusingly similar trademark — whether registered or not — in interstate commerce may constitute a violation of the Lanham Act, 15 U.S.C. 1125(a).  See, e.g., Crystal Entm’t & Filmworks, Inc. v. Jurado, 643 F.3d 1313, 1320 (11th Cir. 2011).

To prevail in a trademark infringement action under the Lanham Act, 15 U.S.C. 1125(a), the plaintiff must demonstrate 1) that it was the first to use the trademark in the same market; 2) that its mark is valid; and 3) that the defendant’s use of the contested mark is likely to confuse consumers.  See, e.g., Popular Bank of Florida v. Banco Popular de Puerto Rico, 9 F. Supp. 1347, 1353 (S.D. Fla. 1998).
Successful claims under the Lanham Act may be entitled to recover up to treble damages and attorneys’ fees.  However, the non-monetary relief that the Lanham Act affords is most significant.  Upon a showing that a party has a substantial likelihood of prevailing on its Lanham Act claim, a court can enjoin the infringing party from continuing its use of the trademark.
Many businesses that use unregistered trademarks may assume that they have no remedy if a competitor begins to use a confusingly similar trademark.  However, the Lanham Act may offer protection.  Therefore, it is worthwhile to discuss any potential infringement of an unregistered trademark with an intellectual property attorney.