It happens–one day you are surfing the Internet, searching your company and your products, and you stumble across someone using a very similar name or logo that is very close to yours, trying to profit off of the goodwill of your brand. What is the first thing you should do?
The first rule of dealing with any potential infringement is to do absolutely nothing. Do not reach out to the company, do not send angry messages through social media channels: just breathe. Once the initial shock wears off, it is very important to contact a trademark attorney so that you can evaluate your rights and what actions may or may not be appropriate in your situation. That all being said, here are the fundamentals of how to look for and handle a trademark infringement.
What is trademark infringement?
When an individual who is not the established owner of a trademark uses the mark, or one very similar to it, in connection with the goods and services for which it is registered in an unauthorized manner, trademark infringement occurs. This includes utilizing the trademark in such a way that would cause consumer confusion, marketplace deception, or an error regarding the source of the goods or services. The intention behind the infringement does not matter–whether or not the imposition has occurred on purpose, the trademark’s owner still has the right to defend their mark in order to prevent infringement and potential confusion in commerce from continuing to occur.
How is infringement reported?
There are a few manners in which trademark infringement is typically reported:
- One of these ways is through filing a Notice of Opposition with the USPTO. When the trademark in question has been submitted as an application to the federal government and has entered into an application phase known as the publication period, which refers to a designated thirty days in which third parties are able to oppose the mark’s registration due to potential conflict with their own. If the owner of a previously existing registration has issue with the application in question, they would then submit an opposition to the USPTO during the opposing mark’s publication period. This video / article discusses how to file a notice of opposition in detail.
- Before delving into a formal legal action, a party will often send a cease and desist letter to the infringing party. The goal of these letters is to reach a settlement agreement prior to escalating the matter to filing a Notice of Opposition a lawsuit in state or federal court.
- If the infringement is taking place on a third-party platform such as Amazon or Facebook, the trademark owner has resources facilitated by those sites that they can use to report it. The website will investigate the matter and remove the offending content. Typically, the site will typically side with the party who has the trademark registration and is defending its use.
- Filing a federal lawsuit is the final method of dealing with trademark infringement. It is important to note that the primary purpose of trademarks is to prevent consumer confusion in commerce, and therefore the key to victory in trademark lawsuits often rests in demonstrating marketplace deception, regardless of whether the infringement was intentional.
Do I need an attorney when reporting infringement?
Even if a trademark owner was able to navigate through the application process alone, if infringement matters arise, they will need to enlist the assistance of an experienced trademark attorney. While the plaintiff must have attorney representation when handling matters in court or before the Trademark Trial and Appeal Board, having a trademark lawyer’s expertise is also essential to upping the chances of success when corresponding with an infringing party or establishing litigation strategy in any enforcement matter. If the trademark owner can successfully prove willful infringement upon their mark, they are subject to receive compensation for both attorney fees and damages. Ultimately, it is extremely important to involve an attorney in handling your trademark enforcement matters, especially when infringement upon your valuable intellectual property is at hand.