One of the keys to commercial success is branding. You put a lot thought into a company name, logo, voice, and look. You spend considerable time developing name recognition. So what if you discover someone else making money off of your business identity? Learn what to do if someone infringes on your trademark.
How Do I Know Someone is Infringing on My Trademark?
Cornell Law defines a trademark as “the word, name, symbol, or design, or any combination, thereof, used in commerce to identify and distinguish…” It’s as important to your business as a patent is to your product. Although you are not required to trademark your business name and logo, it’s strongly recommended to do so through the USPTO (United States Patent & Trademark Office). Start the application early. Then, once you secure the trademark, adhere to Declaration of Use renewal terms, typically every ten years. Trademark infringement occurs when a product or service similar or identical to yours is sold under a name similar or identical to your company’s. It applies to physical retail locations as well as e-commerce.
Do I Have a Trademark Infringement Case?
You most likely browse competitors to stay aware of social media and industry trends. Take note of product names. See who customers are talking about. Also, Google your own name periodically to check for other uses. According to an August 2016 CompuMark and Opinium survey of 440 C-Suite executives, 53% responded that they had pursued trademark infringement cases. Registering a trademark doesn’t mean that that name, phrase, or design can never be used by anyone else. It just protects against other companies creating confusion between you and them. This means that if the products are different and the store locations are geographically distant from another, it’s probably not infringement. For example:
- “Sweet Pea” baby clothing sold by a store in Michigan does not infringe upon “Sweet Pea” smoothies sold by a café in Ohio.
- “Hedgehog Honey” botanical soaps sold by a boutique in Hamilton County, Ohio infringes upon “Hedgehog Honey” botanical soaps sold by a salon in neighboring Warren County.
Alternate spellings and pluralizing words do not constitute work-arounds for trademark infringement. The difference is whether customers are still likely to mistake the product for yours. However, there is also the possibility of infringement if products are different, through what is called “dilution.” A trademark gets “diluted” when it becomes less effective. Similarly, it becomes “tarnished” when the use is applied to something quite contrary to the product’s identity. An example might be an adult shop taking the name of a shoe company.Your trademark case will be unique. Familiarize yourself with USPTO’s Trademark Basics, and consult an attorney experienced in corporate and trademark law.
What Do I Need to Do to Present My Case?
The first step to remedy infringement is to send the other party a cease and desist letter. E-commerce name/product disputes fall under the Anti-Cybersquatting Consumer Protection Act, for which you can also file with the ICANN’s (Internet Corporation for Assigned Names and Numbers) Uniform Domain Name Dispute Resolution Policy. Both situations are involved, intricate matters, making attorney assistance beneficial. Should the cease and desist letter fail, then the case will go to state or federal court (depending upon the geographical extent). The court will review:
- “First use,” that you held the trademark first. This includes the date you initially filed for trademark and the beginning dates for your advertisements, marketing, and sales.
- Active use of your trademark. Make sure not to lapse with trademark renewals, or updating contact information, if you move to or from Cincinnati. Registration info is public record, so trademark existence is part of what businesses should research, when ensuring they’re selling items legally.
- “Bad faith”: deliberate intent to confuse customers, mislead them away from you, and profit from that misrepresentation.
What Outcome Can I Expect for My Trademark Infringement Case?
After analyzing everything from both parties, if the court determines liability, the outcome typically includes:
- Termination of infringing name, or transfer of that account to you
- Award of other party’s profits, plus monies you lost because of their false operations
- Award of attorney fees
With online businesses, if the owner cannot be found and served with a summons, a judgement of “in rem” will occur. The court will order the website terminated or transferred, but monies will not be included. Trademark infringement is a serious violation that should be brought to an attorney’s attention. Seek legal advice as soon as you believe your trademark is under threat. With perseverance and proof of infraction, you’ll be able to reclaim your rights to that business identity. PHOTO: Nick Youngson CC BY-SA 3.0 Alpha Stock Images