It happens. You’ve gone to great efforts to selectively brand your company and make it exclusive, register that name as a trademark, only to discover that someone else is using it without any consequences. Can you tell them, or force them, to stop?
This practice, known as Trademark Infringement, is not legal. As the owner, it’s up to you to protect and defend your trademark. Fortunately, there are clear legal steps available to protect and reclaim the trademark name and prevent others from using it.
Confirm Your Trademark Rights
What trademark rights do you have? This depends on your trademark’s status and whether it’s currently registered with the US Patent & Trademark Office (USPTO).
Check with the USPTO to determine your trademark’s registration status. Is it registered, or have you used it without being registered, meaning you only have common-law rights? Was it previously registered but not renewed?
One issue is the importance of priority. That is, who first used this trademark in commerce. If it’s a registered trademark, the priority will be with the registered owner. For an unregistered trademark, priority will be given to whoever used it first in commerce.
Assess the Infringement
Would two companies with the same name cause problems?
A hair salon well-known for unique styling techniques finds its trademarked name used by another local salon that provides hair extensions, weaves, and wigs. This can lead to customer confusion, costing the hair salon customers who call the other shop by mistake or believe their stylists have changed their offerings.
Similarly, a business that is not salon-related, such as a veterinarian’s office, may be able to use the trademarked name if it wouldn’t confuse.
Gather Evidence
If you’ve discovered that another business is unlawfully using your trademark, you’ll need evidence to support your claim.
- Collect proof of your trademark use, such as dates, marketing materials, and registration certificates.
- Document the infringing use with screenshots, URLs, advertisements, and any other available evidence.
The better you can document your claim, the better your chances of effective enforcement.
What If Your Trademark Is Not Registered?
Your rights as the owner are established when you begin using your trademarked name, even if you don’t register it immediately. However, those rights are only in the area where you use them, and don’t become nationwide until they’re registered. Until then, it’s known as a “common law trademark.”
The USPTO does not require a trademark to be registered, but registration brings greater rights and protections nationwide.
Send a Cease and Desist Letter
Your first step is to contact the party and put them on notice to stop using your trademark. A cease-and-desist letter is a formal notification to another party that they are to stop using your trademark immediately. If they ignore your warning, you can then proceed with legal action, including a lawsuit.
This is the first step in dispute resolution, but it is not a legally binding court order. However, many trademark infringement disputes are resolved without litigation after a cease-and-desist letter.
Explore Negotiation or Settlement
If the other party agrees, you can begin by negotiating the potential for:
- Rebranding
- Licensing agreement
- Coexistence agreement
Resolving the conflict outside of court is much more cost-effective. Work with an experienced trademark attorney for your negotiations to ensure your rights are protected and that everything is done correctly.
File a Trademark Opposition or Cancellation
What if the other party has already begun its own registration process? You still have options.
Once the USPTO approves a trademark application, it is published in the Trademark Official Gazette, initiating a 30-day period during which interested parties may file an opposition.
- If the other party has applied for a trademark, you can begin opposition proceedings with the Trademark Trial and Appeal Board (TTAB) of the USPTO. This is an administrative hearing, not litigation, and only reviews whether a trademark is legally entitled to registration.
- If the trademark is already registered, cancellation proceedings are a legal case against the other party. The TTAB hears the case. This allows one party to show why the other party should have that trademark registration removed.
Grounds for cancellation include non-use of the trademark, abandonment, fraud in the application process, genericness, or other variables invalidating the trademark registration.
Consider Legal Action
If you are unsuccessful and the other party refuses to comply, continues its infringement, and damages your brand, litigation may be the next step.
Litigation can bring additional remedies, including injunctions, monetary damages, and attorneys’ fees. However, it’s essential to have legal counsel from an experienced trademark attorney to bring your case into court.
Has Your Trademark Been Infringed?
TopShelf Trademarks has been helping companies throughout the United States with their trademarks and protecting their intellectual property since 2016. Contact our office today by phone at 1-845-417-7817, via email at team@lkaplanlaw.com, or on our website.