Put the Brakes on Trademark Infringement: Legal Expert Joshua Kaufman Explores the Ins and Outs of Trademark Law, with the Help of Colleague Marcia Auberger. (Advice)

Article excerpt

Artists today routinely incorporate trademarks in their art. Just as routinely, artists are now the recipients of cease-and-desist letters from trademark owners claiming infringement. In fact, as an artist or publisher, you may have been such a recipient, anxiously opening an envelope with the name of a law firm on the exterior and reading with increasing trepidation a letter accusing you of illegal and infringing acts. Because these letters come from lawyers that, in many cases, represent large companies, they usually have the desired effect of scaring the artist or publisher into complying with their demands.

The proliferation of lawsuits is happening for a reason. With the explosion in licensing, companies which were once flattered to have their trademarks included in artwork now see licensing opportunities, and claims of trademark infringement are becoming increasingly common against artists. Some of these claims are legitimate. Many, however, are inappropriate in that they make charges of trademark infringement in circumstances where infringement is unlikely to be found.

Defining A Trademark

A trademark is defined as any word, symbol, name, device or combination of these that are used in conjunction with goods or services (referred to as a service mark for services) to identify the source and quality of those goods or services. Words, pictures, initials, color and non-functional characteristics of a product, such as shape and configuration, can serve as a trademark or service mark. Trademark or service mark rights arise through use--such as affixing the trademark to the goods or using the service mark in conjunction with the service. Once you use the mark in commerce, you have it for as long as you keep using it. Although registration with the U.S. Patent and Trademark Office is not required to acquire trademark rights, federal registration provides additional benefits, and registration should be undertaken if you can afford it.

Trademark owners are required to vigorously pursue all manners of potential infringement of their marks or they run the risk of being considered to have abandoned that mark. This means that if the trademark owner knows of an unauthorized use of a mark, he or she must seek to prevent such use or control such use through a license agreement. Many companies have entire departments that will assert trademark infringement every time they view one of their trademarks being used by a third party. The cease-and-desist letter is step one in that process of enforcing those rights.

The elements for a successful trademark infringement claim have been well established under both federal and state case law. A plaintiff in a trademark infringement case has the burden of proving that the defendant's use of a mark has created a likelihood of confusion about the origin of the defendant's goods or services. The confusion created can be that the defendant's products are the same as that of the plaintiff or that the defendant is somehow associated, affiliated, approved, authorized or sponsored by the trademark owner.

The most common form of relief granted to a successful plaintiff in a trademark infringement lawsuit is an injunction against further infringement. If the infringed mark was federally registered, attorney fees would also be available to a successful plaintiff.

Determining whether an infringement has occurred when an artist incorporates a trademark into artwork requires one to view the work to see how the mark(s) are being used and to determine if such use is an infringing use of such mark(s).

In many instances, however, the trademark owner will claim that incorporating a trademark in artwork causes consumers to believe the artist is associated, affiliated or connected with the trademark owner and the trademark owner has approved, authorized or sponsored the artwork. …