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. |
