How to Protect Against Trademark Infringement: Examples and Advice

What does it mean to register a trademark?

A trademark is different from a copyright or a patent. Trademarking does not protect the right to reproduce a logo. It allows you to build a brand—to set a particular expectation with your customers. That relationship begins as soon as you sell products with the trademark affixed.

However, a federal trademark registration with the United States Patent and Trademark Office (USPTO) provides stronger protection and allows you to use the ® symbol next to your trademark. Once registered, the entire world is on notice, and if anyone infringes your mark, you will have the right tools to make them stop.

What is the legal definition of trademark infringement?

Trademark infringement occurs when someone uses a trademark or service mark without permission in a way that could confuse, deceive, or mislead consumers about the source of goods or services.

According to the USPTO, you must establish three things to prove a trademark infringement claim in court: 

1. You own a valid trademark.
2. Your rights to the mark take priority over the allegedly infringing mark (this is automatically assumed if you registered the trademark with the USPTO).
3. The alleged infringer’s unauthorized use is likely to cause consumer confusion about the source of goods or services associated with the trademark.

Courts look at several factors when evaluating trademark infringement claims, from the similarity between marks to how and where competing products are sold. They’ll also consider the target customers, marketing channels, and any documented instances of confusion in the marketplace. 

Trademark violations can be very expensive to prove because of the evidence required to show likely confusion: customer surveys, social science data, and consumer psychology. All that data may be necessary to make the case that the infringer really did infringe your trademark.

Given the complexity of these cases, it’s highly recommended to consult a trademark attorney should you find yourself in the middle of an infringement dispute.  

6 examples of trademark infringement

Trademark infringement always refers to the unauthorized use of an existing trademark, but this can happen in several ways. Here are some common examples of infringement.

1. Confusingly similar brand names: Using a name similar enough to an existing trademark that it could mislead customers about who’s providing the products or services. 

• Example case: McDonald’s Corp. v. McBagel’s Inc. (1986)
• McBagel’s was forced to change its name after McDonald’s successfully argued that using “Mc” in the name could mislead consumers into thinking there was a connection between the businesses. 

2. Brand dilution: Weakening a famous trademark’s distinctiveness or reputation, even without causing customer confusion about the source of a product or service. 

• Example case: Moseley v. V Secret Catalogue, Inc. (2003)
• Victoria’s Secret sued a small lingerie store named “Victor’s Little Secret” over name dilution. However, the Supreme Court eventually sided with the smaller store because Victoria’s Secret couldn’t provide actual evidence of dilution. 

3. Logo and design copying: When a company steals or reproduces distinctive visual elements of another brand’s trademark, including specific patterns, symbols, or design arrangements.

• Example case: Gucci Am., Inc. v. Guess?, Inc. (2012) 
• Gucci accused Guess of copying several of its design elements, including the square “G” logo, green and red stripes, and interlocking G patterns. While a New York court ruled partially in Gucci’s favor and awarded damages, courts in Italy later rejected Gucci’s claims. 

4. Digital brand violations: The use of an existing trademark in digital spaces (e.g., domain names, social media handles, or online listings) that suggests false association or authorization. 

• Example case: Microsoft v. MikeRoweSoft (2004) 
• Microsoft took action against Mike Rowe, a teenager, for registering the domain “MikeRoweSoft.com” and argued that it infringed on its trademark. Ultimately, Microsoft settled and compensated Rowe for transferring the domain. 

5. Industry-specific terms: When a business uses distinctive industry terms or prefixes that have become synonymous with a specific brand through consistent use.  

• Example case: Tiffany & Co. v. Costco Wholesale Corp. (2013) 
• Tiffany & Co. sued Costco for selling engagement rings labeled as “Tiffany.” After years of litigation, the appeals court decided Costco acted in good faith, and it wasn’t likely that customers would think they were actual Tiffany & Co. rings. 

6. Parody and satire: While parody is legally protected under the First Amendment, it may constitute trademark infringement if there's a high likelihood of confusion about the product source.

• Example case: Vans Inc. v. MSCHF Product Studio Inc. (2024)
• Vans recently filed a lawsuit against the art collective MSCHF over its “Wavy Baby” shoes, which parodied Vans’ Old Skool shoe design with exaggerated, distorted features. The court sided with Vans and determined that the shoes could unfairly exploit Vans’ brand identity.  

How can trademark infringement hurt a brand?

Beyond cutting into your business, infringement of your trademark weakens your ability to enforce the mark. The trademark protects the relationship between you and your customers. The longer another product uses your mark, the less clear your mark becomes to your customers. Tolerate that infringement long enough, and you will lose more than time.

Once a trademark is compromised, it can be very difficult to get back.

Your competitors are not your only risk, though. If a trademark becomes a generic way to describe a product, then you may lose your intellectual property rights to the trademark. Terms like escalator or xerox are names that were once protected but have become generic—largely due to the success of their products.

How to protect a trademark against infringement

For many brands, it’s generally recommended to register with the USPTO for the strongest trademark protection. When you register, you automatically secure nationwide rights to your mark and create public notice of your ownership. 

As a result, it might be a good idea to meet with an intellectual property attorney to discuss your options if you haven’t already taken this step. Better yet, you can connect with one of LegalZoom’s experienced trademark attorneys who can prepare and submit your entire application to the USPTO. 

Besides registering your trademark, you can take the following steps to protect against infringement: 

Perform a trademark search

A comprehensive trademark search is a must whether you’re registering a new mark or protecting an existing one. For new trademarks, this is how you identify potential conflicts before you invest in branding, marketing efforts, and registration with the USPTO.

If you're already a registered trademark owner, you still want to conduct regular searches to spot similar marks that might infringe on your rights. Conversely, this can help you find other brands that may claim you’re infringing on their mark. 

Here’s where you should look: 

• USPTO’s trademark database (TEAS) for federal registrations and applications
• State trademark databases 
• Domain name registrations and websites
• Social media platforms and online marketplaces 
• Industry-specific directories, associations, or publications 

Given all the places to search, it’s helpful to work with an attorney for this step. LegalZoom’s Premium Trademark Registration includes a comprehensive search that covers federal, state, and common law trademark usage. We also have a standalone Trademark Search package if this is all you need. 

Plus, you’ll get feedback from an attorney if any issues arise, and there’s no charge for a second search. 

File your trademark in all appropriate classes

Trademark classes represent a specific category of goods or services, such as clothing, software, or business consulting. The USPTO uses 45 different categories, and you want to ensure you’re covered in all classes where you do (or plan to do) business. 

For instance, if you run a coffee shop that sells branded coffee beans and mugs, you’d likely need protection in multiple classes (e.g., Class 21 for the mugs and Class 30 for the coffee beans). 

Missing a relevant class could leave gaps in your protection that competitors might exploit, but registering in unnecessary classes can just increase costs without adding value. Still, if you work with LegalZoom, your trademark attorney will identify and recommend the appropriate classes for your trademark. 

Update your trademark as needed

More than other forms of intellectual property, trademarks protect your ability to use your mark. If you stop using the trademark, your ability to enforce those rights can get limited or disappear entirely. 

In addition, there are a few situations where you might consider updating your trademark registration: 

• Significant changes. If you modify your business name, logo, colors, or brand presentation
• New products or services. When you expand into different classes not covered by your trademark
• Company changes. Updates to ownership, business name, or legal structure

Besides these updates, the USPTO requires you to submit maintenance filings at specific intervals (between 5–6 and 9–10 years after your registration date, then every 10 years) to keep your registration active. 

Monitor your trademark for infringement

Trademark monitoring is a full-time job that requires ongoing attention to protect your brand. This helps you spot potential infringement early and take action before it significantly damages your reputation, so watch out for the following: 

• Unauthorized use of your mark or similar variations
• Competitors launching similar brands or products
• Counterfeit products in your market
• Misleading online advertising or listings 

You can also use professional monitoring services like LegalZoom to look out for potential violations. Our software automatically scans the USPTO’s database, and you’ll get a detailed report each month that highlights any new risks to be aware of. 

Beyond monitoring, you have to assert your trademark and put an end to any infringement—fast. Do whatever you can to stop the infringement before it erodes the value of the trademark, starting with contacting an attorney immediately. 

How to register a strong trademark

In many respects, the best way to avoid trademark infringement is by registering a strong and enforceable trademark with the USPTO. As the #1 trademark filer in America, LegalZoom can help you with every part of the process. 

Here’s what we’ll do:

• Initial consultation and review. Meet with an experienced trademark attorney who will evaluate your mark and discuss your business needs.
• Search and analysis. Your attorney will conduct a thorough trademark search to help you avoid registration issues and future disputes.
• File your trademark application. We’ll handle all USPTO paperwork and ensure your mark is filed in the appropriate classes with clear descriptions.

You can also partner with LegalZoom for ongoing support, whether you need active trademark monitoring or want to meet with a business attorney for advice. 

FAQs

How long do you keep a trademark active?

A trademark can stay active indefinitely as long as you continue using it in commerce and maintain proper registration with the USPTO. This includes filing required maintenance documents and paying renewal fees as needed.

Can you sue for trademark infringement?

Yes, trademark owners can sue for infringement in either federal or state courts. If successful, the court may order the infringer to stop using the mark, destroy the infringing product, or pay monetary damages (including attorney fees). 

What happens if you don't protect a trademark?

If you don’t protect your trademark, other brands may use similar marks and dilute your brand’s distinctiveness. Over time, this can damage your market position and recognition, leading customers to associate your goods or services with a different brand. 

How much does trademark infringement cost?

It depends. For instance, if the infringer complies with a cease and desist letter, expenses might be minimal. However, legal fees and associated costs can reach tens of thousands or more if you take legal action and the case goes to court. 

How do you know if you're infringing on a trademark?

You might be infringing on an existing trademark owner's mark if you confuse customers about the source of products or services. It’s best to check federal and state registrations for any existing trademarks (along with similar variations) or contact an attorney for clarification.

Joe Runge, Esq. contributed to this article.