Trademark infringement is 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.
When Does Trademark Infringement Occur?
Trademark infringement occurs when another person or business violates the mark holder's exclusive rights to use the registered material.
Infringement may occur when a person uses an identical or similar mark as the already registered trademark that another person owns. However, there are some exceptions as to what counts as infringement:
- To count as infringement, the products or services must also be identical or similar to those registered under the trademark.
- In some countries, a person can't infringe on a trademark that isn't registered. Thus, the owner of an unregistered mark can't act against infringement.
- In countries that follow common law rights, such as the U.S., the person who first used a brand name or other protected content may act against a person or business who has infringed on those protected materials.
- One of the most common types o trademark infringement is when a person uses a symbol or a design that it is too similar to protected material. To prove infringement, the owner of the trademark only needs to show that the infringing material is identical or deceptively similar. This is the only proof required.
What Do I Do If I Think That Someone Is Infringing Upon My Trademark?
Step 1. Establish if an infringement of your trademark actually took place. You must be able to show that the infringing trademark is being used on the same or similar goods or services for which your trademark is registered. Determine whether the infringing trademark will cause confusion about the product’s origins.
Step 2. Take Action. You should seek advice from an experienced trademark attorney. In most cases, we will advise you to send a cease and desist letter or the attorney can send a cease and desist order on your behalf. A cease and desist order is essentially a demand letter, sent to the trademark infringer, explaining how their mark is infringing upon your trademark. It is possible that the infringer did not know about your pre-existing mark. It is also possible that the infringer did know about your mark and was attempting to steal your clients by appearing as if they are you. In either case, the cease and desist letter should demand that the infringer must stop using your mark within a certain number of days (usually five days). If your cease and desist letter is ignored, you should consult with your trademark attorney about filing a lawsuit.
This is why registering your trademark is an important step in your business. If you don’t register your trademark, your competitors can and then. By registering your trademark, you place yourself in the best legal position to protect it. Your registered trademark is one of your most valuable assets in your business.
What Do I Do IfSomeone Accuses Me of Infringing Upon Their Trademark?
If someone accuses you of Trademark Infringement you will usually be notified in one of three ways:
(1) you will be informally notified by mail or email;
(2) you will be served with a cease and desist letter, or
(3) you will be served with a state or federal civil lawsuit.
Step 1: Take a breath and calm down.
Step 2: Read the communication and identify the trademark(s) that is at controversy.
Step 3: Conduct your own analysis of the mark.
There are three levels of protection for your trademark. They are at the federal level, trademarks registered at the state level and unregistered trademarks that are in use in commerce.
Did you design the mark yourself?
Did you hire someone to design the mark for you?
Did you acquire the mark from the internet (Google Photos, Facebook, Twitter, Instagram, etc.)?And ask yourself, whether there is a possibility that you could have infringed upon someone else’s trademark. Or are you sure that you are the legal owner of the mark.
Did you check the UnitedStates Patent and Trademark Office and conduct a search for the mark before your used it?
Step 4: Determine whether the claim is legitimate, or do you think that you are being maliciously targeted.
Step 4: DO NOT post your letter or lawsuit on social media.
Step 5: Save all of the communication that you have about the issue. This includes all emails, letters, court documents, inboxes, direct messages, etc.
Step 6: Bring this matter to your attorney.
Step 7: Take action.
a. You may want to handle the trademark infringement matter on your own. You can communicate with the accuser and negotiate to settle the dispute. If you are confident about your position, you can ignore the claim (unless it is a legal Complaint). You can deny the claim either with a short explanation or a long explanation.
b. Have your attorney represent you and reply to the accuser. When you involve an attorney in your dispute, it sends the message that you are serious about defending your position. They may interpret this as you investing in yourself, your trademark and your company if you are willing to invest in legal representation.
c. If you see the infringer’s mark on social media, you can file a complaint with the various websites.
d. File a lawsuit.
Civil Remedies For Trademark Infringement
You can receive a variety of trademark infringement remedies if somebody uses your mark without your permission.
Under the Lanham Act, there are several statutory remedies for trademark infringement, including:
- Accounting for profits and damages
- Injunctive relief
- Treble damages in certain circumstances
- Attorney's fees and costs
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Karin Y. Coger, Esq.