In a previous post we discussed some of the basic tenets of the Lanham Act, which provides trademark protection for those marks used in interstate commerce. However, the act also has provisions regarding the remedies that mark owners may pursue if and when their trademarks are infringed upon as well as provisions that may make them incontestable.
According to the law, a trademark may be considered infringed upon when it is used in business to sell, distribute, or advertise goods or services for products not sold by the holder’s company. Infringement may also occur when a registered mark is reproduced, copied or counterfeit and applied to labels, signs and other packaging to sell products that are not sold by the true holder’s company. When the likelihood of confusion is high for which brand is the true mark holder, the infringing party may be liable for the damages it caused to the true owner and anyone else who is likely to be damaged by the actions of the infringer. Remedies for these cases can involve rights against future printing of the mark in question, an injunction against the printing of the unauthorized mark in future publications, and monetary damages.
Another tenet of the Lanham Act states that trademarks are not always under threat of being lost. The U.S. Patent and Trademark Office reports that after a period of five consecutive years of use directly following registration of a mark, the trademark is considered incontestable so long as there has been no ruling against the owners’ ability to register the mark, no litigation pending in the courts regarding the use of the mark, the mark is not a generic name for any goods or services, and the owner files an affidavit swearing to these provisions within one year after the five year period ends.