What to Do If Your Trademark is Infringed Upon

By Josh Gerben, Esq.

The primary motivation for seeking a trademark registration is often the protection that it can provide, typically in order to prevent infringement upon the registered mark. Regardless of the circumstances, dealing with trademark infringement when it does occur can be a daunting task. So, what should you do if another party is using your trademark? Fully evaluate the situation, put an end to the infringement, and secure the help of a trademark attorney.

What is Trademark Infringement?

What exactly is trademark infringement, and how do you recognize these matters when they do arise? It is important to keep in mind that the main purpose of a trademark is to prevent confusion between two marks that are overtly similar—when confusion does occur, that qualifies as trademark infringement; this includes using the trademark in such a way that could cause a misconception of a product’s origins or deception in the marketplace.

Sometimes these situations can be unintentional and swiftly remedied, while other cases are strategically calculated with ill intent in order to encroach on the goods and services of a competitor. However, the intention ultimately does not matter, as the trademark’s owner maintains the right to defend their mark and prevent further imposition from occurring.

How to Know if Your Trademark is Being Infringed Upon

The first step in ending an infringement matter is identifying the issue at hand and making sure a violation of your trademark rights is actually occurring. The key to knowing if your trademark is truly experiencing infringement is that aforementioned element of confusion—if there is a likelihood of confusion in consumers between your mark and the infringing mark in the marketplace, infringement is taking place.

A widely known example of two very similar trademarks coexisting without confusion is Delta, which is used by both the airline and the faucet company. These marks are able to work simultaneously because of the natural separation of their industries; no one ever walks into a home improvement store thinking they can buy plane tickets, just like any traveler will not mistakenly purchase a sink while booking a flight.

Before you delve too far into the matter your company may be experiencing, make sure that a risk of confusion for goods or services similar to yours is truly a factor.

How to Stop a Trademark Infringer

Once the infringement matter has been identified, it’s time to bring in the attorneys. Hiring an experienced trademark counsel is the most efficient way to bring about the conclusion of the infringement matter while also ensuring you are prepared to handle any roadblocks that may pop up along the way. A lawyer will guide you through the necessary steps in handling your trademark infringement, which often proceed like this:

Step 1: Send a cease-and-desist letter

Sending a cease and desist letter is often the first step in notifying the infringer of the situation and letting them know you are aware of your rights in your trademark. These letters outline the infringement that has occurred and allows the trademark owner to give their demands moving forward.

Step 2: Report the infringement to the USPTO

Next, the infringement matter should be reported to the USPTO. If the infringing mark has been submitted as a trademark application to the USPTO, you can file a Notice of Opposition against the mark during its thirty-day publication period.

Step 3: Filing a lawsuit

Should the cease and desist letter and deadlines given within it be ignored by the infringer, the trademark owner can file a lawsuit. While lawsuits are typically not the initial choice due to their length and cost, they are necessary if the original cease and desist letter is not acknowledged.

Your trademark attorney can help to decide if your lawsuit is appropriate for state or federal court due to the span of the infringement. Because trademarks are meant to prevent marketplace confusion, demonstrating that imposition on your mark is essential to winning your case.

Once the case is resolved, the infringement on your trademark will stop and you may be able to receive compensation or attorney’s fees from the infringer as part of the settlement.

How to Protect Against Future Infringement

Moving forward, it is imperative that you continue to use your trademark in order to maintain your rights within it. Make sure that every aspect of your business is safeguarded by filing trademarks for new product names and logos as they are born, and consult with your attorney to see what other elements of your branding should be protected.

Monitoring the trademark register for new applications and other marks that are too similar to yours is also a crucial part of protecting yourself against future infringement matters; often, attorneys offer monitoring services that keep tabs on new marks and allow you to file timely oppositions as needed.

Additionally, utilizing tools such as Google Alerts will help you identify when new businesses and products using your name appear. Not only does that help you keep track of your growing industry, but it ensures that the marketplace does not become overly diluted. Policing both the register and the marketplace will help to maintain the uniqueness of your mark, as well as the rights you have in it.

Final Thoughts

Should you have any questions regarding trademark infringement or feel that another party is inappropriately using your mark, get in touch with an attorney at Gerben IP today for a complimentary evaluation.

Having an experienced team of lawyers on your side will not only set you up for success during any infringement matters, but assist in preserving the integrity of your trademarks for the future.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.