Your company’s name, logo, tagline, and other marks are the heart and soul of your business identity. They set your brand apart from the competition, becoming more recognizable as your reputation and business grows. Plus now there are your digital rights too.
Discovering someone is using your marks or elements that appear confusingly similar to them can be surprising and upsetting.
Rather than directly contacting the entity or individual you believe to be infringing on your trademark, it is recommended to follow a more systematic protocol.
Is it Trademark Infringement?
First, you must determine whether your trademark rights are genuinely being violated from a legal standpoint. While common law does provide some rights for unregistered trademarks, having a federally registered trademark with the United States, Patent and Trademark Office (USPTO) adds stronger legal ground and protection in an infringement claim.
Even for small businesses, there are many reasons to register trademarks, including:
- National protection
- Ability to use the ® symbol to prevent any argument of innocent infringement
The USPTO defines trademark infringement as “the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.” Aside from ownership and seniority, the plaintiff in a trademark infringement claim must prove the defendant’s mark is likely to cause confusion.
For example, a company named ABC Transportation would have difficulty bringing a successful trademark infringement lawsuit against a laundromat named ABC Laundry since the two companies operate in very different industries. If a company were to name itself ABC Transit, on the other hand, then ABC Transportation might have a valid claim of trademark infringement.
The location also factors into the likelihood of confusion. In the case of two similarly named local coffee shops in California and Ohio, neither would be able to bring a successful infringement claim because customers in the two locations would not confusedly wander into the other shop thousands of miles away based on a competitor’s use of a trademark in another part of the country. However, if they were eCommerce businesses, the outcome of a claim would likely favor one over the other.
It’s important to understand that a mark or name does not necessarily need to be identical for confusion among consumers. Courts will consider the degree of similarity and, as in the previous example, whether the goods or services between the plaintiff and defendant are sufficiently related. Advertising use, intent, range of prospective purchases, and other facts might also be considered by a court.
Hire a Trademark Attorney
If you believe you have a valid claim for trademark infringement, do not try to take the matter into your own hands. Contact a business law firm, with experienced trademark attorneys on staff. Despite initial perceptions, trademark infringement can be highly complex and requires knowledge of the process and prior precedent. Skilled attorneys will consult with you to determine whether you have a viable trademark infringement claim and your likelihood of success on the merits. Trademark attorneys will protect your interests aggressively if you have a viable claim.
Most people do not jump straight to filing a lawsuit for trademark infringement, primarily because the time and costs associated with litigation can be substantial. More often, a cease-and-desist letter is used as both a deterrent and a warning. The cease-and-desist letter demands that the infringer immediately remove the trademark(s) or be subject to a lawsuit. While the message must be explicit, the language should be worded carefully to encourage compliance and adhere to the facts and established law. Keep in mind the infringer may be unaware your trademark exists. When that is the case, a cease-and-desist letter is often effective in resolving the infringement.
Alternative Dispute Resolution (ADR)
If a cease-and-desist letter is ignored or contested, there still might be a less expensive and labor-intensive means of protecting your trademark than filing a lawsuit. Alternative dispute resolution (ADR), such as arbitration or mediation, can effectively trademark disputes.
A neutral third party facilitates a discussion in mediation—and, ideally, a mutually agreeable resolution—between disputants. Mediation can sometimes take as little as a few hours and provides more confidentiality than going to court. Learn more about mediation in this article.
Trademark Lawsuit and Litigation
If mediation is not successful or not desired in a specific case, the final step is to file a trademark infringement lawsuit in federal or state court and proceed with litigation. Most trademark owners choose to file for federal infringement because their trademark is filed with the USPTO, a federal agency.
As a recap of the criteria discussed at the beginning of this article, a trademark owner must prove the following in order to support a trademark infringement claim in court:
- The trademark has been registered
- The defendant is using the trademark or a similar mark
- The defendant’s use causes confusion between the two companies
The USPTO lists the following available remedies for a successful trademark infringement claim:
- a court order (injunction) that the defendant stop using the accused mark
- an order requiring the destruction or forfeiture of infringing articles
- monetary relief, including defendant’s profits, any damages sustained by the plaintiff, and the costs of the action
- an order that the defendant, in certain cases, pays the plaintiffs’ attorneys’ fees.
If you have any questions about registering a trademark and/or pursuing an infringement claim, seek out the professionals. In San Diego, for example you may choose a firm like Gehres Law Group, P.C., attorneys who have extensive experience consulting and litigating in all areas of trademark and intellectual property law.