Chhabra Law provides aggressive representation handling trademark infringement matters, including responding to cease-desist matters or handling opposition matters at the USPTO. We have a very good success rate in reaching acceptable solutions for our clients -- even in matters where imminent litigation was threatened by large law firms that were hired by the other party.
We assist clients in sending or responding to cease and desist letters and other complex litigation matters. We strive to aggressively protect our intellectual property rights to the fullest.
Trademark infringement is the unauthorized use of a mark, on or in connection with goods and/or services. Chhabra® Law assists clients with all facets of trademark ligation. Whether you are being asked to stop doing business because of an alleged trademark infringement or domain name dispute, or believe someone is alleging on your trademark rights, we can assist you with protecting or defending your legal rights.
Often times cease desist letters are unreasonable and ask you to let go an important right necessary to successfully operate your business. If you have received a patent or trademark cease and desist letter, it is important that you avoid direct contact with the sender of the letter. If you received a cease and desist letter we strongly urge you to not respond directly to the originator of the letter. Let your attorney do the talking on you behalf. A cease and desist letter is often a prelude to litigation and thus any statements made by you while attempting to negotiate can be used against you. Let your attorney do the talking on your behalf.
ELEMENTS OF TRADEMARK INFRINGEMENT To prevail in a claim of trademark infringement, the mark needs to be valid and entitled to protection. Plaintiff has the responsibly to show that the defendant is using the same or a similar mark in connection with their business. Plaintiff must show that defendant's (i) use of the mark, (ii) in the stream of commerce, (iii) would likely cause confusion to an average user as to the source of the goods or services.
"Use" means the mark in question needs to be used in connection of sales of goods and services by the defendant.
"In commerce" means that the mark needs to be performing an activity that creates a basis to impose congressional power to regulate interstate commerce. This condition is satisfied when the defendant is advertising their goods and/or services on the internet or through any other medium like newspapers, billboards, radio or television.
"Likelihood of confusion" means that the goods and/or services being offered are likely going to confuse the average user as to the source of the goods/services. The two most important considerations are: (i) the similarities between the marks, and (ii) the similarities between the goods/services.
The Federal Circuit has held that the similarity of the marks, including appearance, sound, connotation, and commercial impression, is a “predominant inquiry.” Herbko Int'l Inc. v.Kappa Books Inc., 308 F.3d 1156,64 U.S.P.Q.2d 1375, 1380 (Fed. Cir. 2002). And in assessing the relatedness of the goods and/or services, the more similar the marks at issue, the less similar the goods or services need to be to support a finding of likelihood of confusion. See In re Shell Oil Co., 992 F.2d 1204 (1993). With respect to marks that contain additional matter (e.g., design marks), if the dominant portion of both marks is the same, then the marks may be confusingly similar notwithstanding peripheral differences. See In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1187 (TTAB 2018).
Further, if the marks of the respective parties are identical or virtually identical, the relationship between the goods and/or services need not be as close to support a finding of likelihood of confusion as would be required if there were differences between the marks. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012).