Michael W. Schroeder
How Can I Stop A Trademark Infringer?
The US Trademark Law allows individuals to protect their names and other commercial signifiers like logos that are used to identify their products and services. You are not obligated to register your mark federally but doing so with the US Patent and Trademark Office comes with a host of advantages. This includes notifying the public that you own a specific mark and getting the exclusive right of using the mark for the commercialization of your goods and services. As a trademark owner, you can also stop others from trademark infringement. That said, what can you do if you find that another company or individual is using your mark?
Send The Infringer A Cease & Desist Letter
If you discover an unauthorized company or person using your mark, the most sensible step forward is to file a lawsuit.. However, before taking such drastic measures, most intellectual property attorneys that you hire to represent you would send the infringer a strongly-worded cease & desist letter, which is a demand letter, succinctly explaining the infringement to the trademark infringer.
In some cases, the infringer might not know that the mark he/she is using is a pre-existing federally registered trademark. Alternatively, the infringer might know that the trademark is owned by another entity and might be trying to take advantage of your goodwill with your loyal consumers. Irrespective of whether it is the former or the latter, a cease and desist letter will ask the infringer to stop the usage of your mark within a specific period. Furthermore, if the infringer ignores your letter, it can serve as evidence when you file a lawsuit that you tried to negotiate in good faith with the infringer before resorting to litigation, building the case that the infringement is willful, potentially leading to increased damages awards.
As mentioned above, hiring a trademark lawyer can prove to be beneficial in this regard as a cease & desist letter on the letterhead of a law firm is taken much more seriously by the infringing party. Although there is no rule that says you cannot send one yourself, sending it on a law firm’s letterhead might make the process easier and much more fruitful.
Trademark Infringement Lawsuit
If the infringer ends up ignoring your cease & desist letter, you will have no choice but to file a trademark infringement lawsuit and sue. There exist a number of potential considerations and claims that you can make in this lawsuit.
Likelihood Of Confusion
To begin with, it is important to note that the entire purpose of trademark law is to protect consumers. Although trademarks benefit businesses, courts first tend to incline towards ensuring that consumers can quickly and correctly determine the origin of the services and goods they purchase. Hence, under the trademark statute, a court will consider whether or not there exists a likelihood of confusion between the infringing mark and your mark. In other words, the court will attempt to determine if the average consumer would be confused regarding the source of the product they are purchasing.
Courts consider a number of factors when assessing if your trademark is being infringed by someone else. Some of these factors include:
Whether the infringer is using your trademark on competing services or goods
Whether there is a possibility of consumers getting confused by the dual trademark use
Whether there is any market interface between the infringer and your company
Whether the infringer is using your trademark in similar trade channels, targeting similar consumers
Whether there has been any evidence of actual consumer confusion in the marketplace
It is important to note here that there is no single factor that determines the decision made by the court. That said, these issues weigh on the decision-making process of the court while evaluating whether there exists the likelihood of consumers being confused.
Trademark Tarnishment & Dilution
Besides claiming a likelihood of confusion with the infringing mark, once your mark becomes famous, another claim that you can make is that it is diluting or tarnishing your mark. Under federal laws and some state laws, there are dilution statutes that prevent your trademark from being infringed by another person or company if your trademark is famous and the infringing mark can dilute the strength of your mark. In other words, mark dilution takes place when someone else uses your famous mark without authorization, weakening the reputation of your mark. Furthermore, if someone uses your famous mark in a manner that would potentially damage the reputation of the famous brand, a similar claim can be made under a theory of tarnishment. The key element in such claims is that your mark is recognizable, famous, and distinctive.
The statute of dilution applies even if there is no possibility of customers confusing the origin of the services or goods with those who own the famous mark. For example, consumers might not believe that there is an association or connection between Microsoft toilet paper and the software company, Microsoft. However, the hypothetical makers of the former could still likely be made to select another mark under federal dilution law.
Get Help From Experts
When it comes to trademark infringement, the first and foremost thing to do is to hire an expert intellectual property attorney who is experienced in handling trademark infringement cases. An attorney is best equipped to help you preserve your reputation and ensure that the infringer stops the use of your mark as soon as possible. An attorney will also be able to guide you on the steps to follow to protect your rights.
Get in touch with us at Trademark.Legal for expert representation from seasoned trademark lawyers!