In Part One, we looked at infringement from a copyright perspective. We discussed how to stop infringers and how to avoid becoming an infringer. And we rounded out our discussion by reviewing a few common defenses to copyright infringement claims.
Part Two is all about trademark infringement. To recap, trademark infringement is the unauthorized use of another’s trademark that leads to public (potential customers) confusion as to the actual company producing the product or delivering the service.
STOPPING INFRINGEMENT
Protecting your Brand
The obvious first step is to secure your trademark. While the U.S. is the first to use a trademark system, it would be a mistake to not prioritize applying for a trademark. You don’t want to let three or four years pass, then decide to apply, and find a pending trademark that is the same or similar to your trademark.
At that point you would have to (1) consider rebranding, (2) challenge the pending trademark application if you can prove that you were using the trademark in commerce first or, (3) petition to have the trademark registration cancelled if you can prove you have superior rights.
Whatever option is best for you, you will likely lose sleep and spend more than if you had invested in applying for the trademark at the beginning.
Monitoring
Receiving that registration certificate from the USPTO is just the start. It’s up to you to monitor the use of your trademark. This may be news to some, but the USPTO will not monitor and stop infringers on your behalf. The USPTO will not alert you if someone starts using your slogan. The USPTO will not monitor social media and websites for you.
Once you have the registration certificate in hand, its important that you use the trademark as described in the registration, AND its your responsibility to monitor for misuse. Monitoring for you may include setting up Google alerts or blocking time on your calendar to search social media and the USPTO for pending applications.
Handling your Business
You’ve registered. You monitor consistently (or hire us to help) and found someone misusing your trademark or plain copying your trademark. Best case scenario, you never have to head to court, and with your registered trademark in hand, you can stop the infringement with a cease-and-desist letter sent to the infringer.
The cease-and-desist letter would assert that you are the rightful trademark owner and demand the immediate end of the infringement. But if the infringement continues, with a registered trademark, you have a legal presumption that you own the trademark which, similar to what we covered in Part One, is critical if you need to head to federal court.
The goal of bringing a lawsuit is to (1) stop the infringement and (2) seek damages for the loss suffered by your business.
HOW TO AVOID INFRINGEMENT?
Search, Search, and Search. For some of us, coming up with brand names that perfectly captures the feelings we want to evoke in our target customers that’s memorable, and that stands the test of time, is not easy.
So you go through brainstorming sessions, write down your ideas, conduct surveys, ask family and friends for their input, until you land on the “perfect” name.
Before you spend time and money on creating logos, developing a marketing campaign, and securing the social media handles, you will want to conduct a thorough search to make sure your name does not infringe on an existing trademark.
Remember, the fact that you did not find someone using the exact name does not mean you are free from an infringement claim.
DEFENSES TO INFRINGEMENT
Now, before you go after someone or strike a name from your list because you don’t want to get hit with a cease and desist, you should know that determining whether the use constitutes infringement requires careful consideration.
If you’re curious, you can do a deeper dive and take a look at the 8 Factor Trademark Infringement Test that courts use when reviewing a trademark infringement claim.
Here, I want to focus on two of the factors based on what I encounter and questions I receive from clients using the following example:
A portion of your trademarked slogan is emblazoned on a t-shirt, one of many styles in an online store. And your trademark was registered in connection with your startup business coaching services only.
The marks are not similar: Assuming your mark does not contain a completely made-up term, you have to consider the marks in their entirety, not in its separate features.
The goods or services are unrelated: Remember, your registration grants you the exclusive right to use your trademark in the classes that represent the goods or services you offer to the public. It’s not a blanket right.
So in our brief example, a portion of a slogan on apparel sold at an online apparel store is unrelated to a business coaching service.
Just like with copyrights, when it comes to trademarks, the facts matter when making a determination of infringement. Check out our Intellectual Property page for more information on how we help you protect your intellectual property.
It’s always better to prevent a problem than to fix a problem. Put yourself in the best position to protect and maximize your IP.
Feel free to reach out to us for a consultation to get started on protecting your intellectual property.