fbpx

Lost your Password?

  Speak to a Specialist: (800) 906-8626

An Insider's Guide to Trademark Enforcement

Congratulations! Your trademark is registered! That means that no one can infringe upon your rights and use a trademark that is confusingly similar to yours, right? Wrong! A common misconception is that registered trademarks are self-enforcing. In other words, once registered, you never have to worry about knock off brands stealing your customers. If only that were the case. In this article we will address common issues trademark owners encounter and how to stop the unwanted infringement of your trademark.

by Matt Swyers

updated 07/19/2024 | 4 Min Read 

Twitter Facebook
What is trademark infringement?
Trademark infringement occurs when another individual or company adopts and begins to use a trademark that is confusingly similar to a trademark already in use in connection with similar goods or services. For instance, let’s say your trademark is McDonald’s for “restaurant services”. Another business cannot use the term McDonald’s also for restaurant services. This would easily be a case of trademark infringement and the company who began use of the term first would be able to stop the second user from using the trademark.
Popular Articles
Do the trademarks have to be identical?
In a word, no. But they do need to be similar enough, in the eyes of consumers, that confusion would exist if the second trademark were allowed to be used in commerce. Let’s take a look back at our previous example. Do you recall the Eddie Murphy movie Coming to America? In the movie, the father of the love interest owns a restaurant that looks shockingly like a McDonald’s restaurant. The only difference? Its name is McDowell’s. There are a lot of subtle jokes about the father knocking off the more famous brand culminating near the end when he is seen reading a McDonald’s operations book in his office. Great movie. But in real life this would be an open and shut case of trademark infringement. So even if the trademarks are not 100% the same, if they are similar enough or presented in a manner that consumers would be confused, that’s infringement.
 
How do I know if my trademark is being infringed?
Sometimes it’s easy to spot, other times it is more challenging. But in either case, you need to watch for it as it can impact your business. In one of the worst cases we have ever seen, one of our customers was put out of business by infringement that was left unchecked for too long. They ran an online vitamin company. Over a period of months, they noticed a steep decline in sales. One day they decided to perform a search online to see what their competition was up to. To their astonishment, their biggest competitor was offering a competing product to their top-selling product for sale on their website, using their trademark, at a fraction of the price!  Because they had waited so long to figure this out, they were strapped for cash. They could not afford a lawyer to make their competitor stop and eventually their business went bankrupt. Don’t let this happen to you.
 
The best way to monitor for infringement is to pay for a specialized monitoring service. This way you will be alerted to infringement and can take the appropriate action as soon as possible. If you do not wish to pay for monitoring, which is highly recommended, set a Google Alert for your trademark so that, at a minimum, you have a direct-hit simple monitoring program that is on the lookout for infringement.
What do I do if I spot infringement?
Take action immediately. Legally speaking, failure to enforce your trademark can lead to loss of trademark rights. But more importantly, failure to enforce your trademark can lead to confusion among your customers, loss of revenue, and in extreme cases, bankruptcy. Accordingly, when spotted you should seek assistance as soon as possible to ascertain what your options are.
 
It is not recommended that you reach out to the purported infringer by yourself. Why? An owner’s rights in a trademark generally begin upon use of a trademark. As such, it is imperative that your trademark’s priority of use is confirmed via due diligence before any action is taken. You may think that you are the first to have used your trademark, but there’s always a possibility you were not. And if you are not the first if you reach out you are effectively contacting the other party and admitting to your own trademark infringement of their trademark. Don’t do it.
 
Instead, contact a company that is skilled in conducting due diligence to confirm your priority of use before taking any action.
 
What do I do once it’s confirmed I used my trademark first?
Send them a Cease-and-Desist Letter. A Cease-and-Desist Letter outlines your rights in your trademark vis-a-vis their inferior rights in the trademark they are using. In short, it puts them on notice that they are infringing on your trademark.
 
The letter should outline how you want them to cure the issue. In most circumstances, the main concern is the continued use of the infringing trademark. As such, the primary demand is typically that the infringer cease use of their trademark. Often a phase out period of 1 to 6 months is allowed depending on the parties and the circumstances. Other common demands may be to withdraw a blocking trademark from the USPTO’s register or provide consent to register a trademark and/or monetary damages.
 
What if they don’t respond to my Cease-and-Desist Letter?
Sometimes the recipient of your letter will ignore it or respond denying that the infringement exists. When this occurs, you have multiple options depending on how aggressive you would like to be and where the infringement is occurring.
 
If the infringement is occurring at the USPTO, a Letter of Protest may be appropriate. If it is on a website or social media (e.g., Facebook, Instagram) a Web Site or Social Media Take Down Package may work. Finally, all remedies can be included in a federal district lawsuit, but this option could take years costing hundreds of thousands of dollars in attorney’s fees.
 
Conclusion
In conclusion, trademarks must be enforced to be maintained. But with these insider tips in mind, keep an eye out for infringement and if it is ever spotted act quickly, with the assistance of a professional, to have it stopped.

Enforce Your Trademark Today!

Enforce Your Trademark