10 Sep How Do I Stop or Sue a Trademark Infringer?
Businesses of every size rely on their brand names and logos to successfully market themselves to potential customers. Crafting a unique brand for your business is a huge step towards reaching your target customers and building a successful company. Once you have developed a great brand, you will want to protect your hard work.
Registering a trademark takes some time, effort, and expense, but it is worth the energy. Registering your brand’s name and logos gives you numerous option to protect your business’s intellectual property. With this protection, if another company attempts to use your brand to market their products, you will have the legal protection to stop or sue the trademark infringer. Without trademark protection, your hard work, good ideas, and your target customer base can be at risk.
What Does Your Trademark Protect?
People and businesses alike have the right to protect their intellectual property (IP). One way businesses commonly do this is by registering a trademark with the U.S. Patent and Trademark Office (USPTO). The USPTO is a federal agency that is responsible for registering trademarks, copyrights, and patents, and for enforcing IP laws. Each of these categories of IP protect certain kinds of ideas and creative products. Trademark is the tool that protects brand names and logos used on goods and services. By registering your trademark through the USPTO, your company gains broad legal rights over the use of that trademark, and other companies cannot use that brand name or logo to market similar goods and services in similar markets without permission. As in any system, some companies ignore the law and misuse another business’s trademark. As long as you have registered your business’s trademark, you have the right to sue someone who infringes on your intellectual property.
Defining Trademark Infringement
If you hold a trademark for your business’s name or logo (meaning that you have registered that mark with the USPTO) and you notice some other company is using the same or very similar mark, there may be something you can do about it. However, trademark infringement requires some specific elements. First, the use of the registered mark must be unauthorized by the trademark holder. Second, the use of the mark would have to be done in such a way that it would cause confusion or mistake about the source of the goods or services. That is, trademark infringement does not necessarily occur when another company simply uses your brand name or logo. Infringement only occurs when the actions of another company would cause a customer to think that they are buying one product when they are really receiving another.
Take, for example, the national sandwich fast-food chain Subway. Let’s say there is a new small business named Subway that buys and sells miniature models of subway trains from a single retail location. Would the model train business be infringing upon the restaurant chain’s trademark simply by using the same name? No, probably not, because the model train business is selling a completely different good (tiny trains v. fast sandwiches), and most customers would not be confused about which business offers which product. However, if the model train shop started selling sandwiches while keeping its name, it may have infringed on the restaurant’s trademark.
Can I Stop Trademark Infringement without Filing a Lawsuit?
If you hold a trademark with the USPTO, and you believe your trademark is being infringed upon under the definition above, there are some immediate steps you can take to try to stop the infringer before filing a lawsuit. Your best first step is to contact a skilled intellectual property attorney who understands this complex area of law. Your lawyer can determine if infringement occurred and if so, they can help you decide what course of action to take. Your lawyer will want to examine your trademark registration to ensure it is valid and determine whether your registration is limited in any way (some trademarks are only protected within a specified geographic region while others are protected from misuse across the United States).
After ensuring your trademark is valid and determining that infringement has occurred, your attorney may send a cease-and-desist letter to an infringer. This kind of formal letter serves as a warning to the infringer: stop misusing the trademark immediately or face the consequences. If the trademark infringer continues to misuse your IP, you may want to consider filing a lawsuit with the help of your trademark attorney.
Suing for Trademark Infringement
Deciding whether to file a lawsuit can be a tough choice. Lawsuits can be time-consuming and expensive. You will want to weigh the time and expense of litigation against the cost of losing business to the infringer. If you decide to file a lawsuit for trademark infringement, the suit will be filed in federal court instead of a local or state court. This is because federal law determines your rights (and obligations) as the trademark holder. Once you (the plaintiff) file your lawsuit, you will need to prove that your trademark was properly registered with the USPTO and that the infringer (the defendant) did in fact in misuse it. You will also need to prove that your business suffered actual harm due to the trademark infringement.
Additionally, you will need to ask the court to take a specific action to rectify the harm done. The three most common actions a court can take to remedy the situation are:
- Issue an injunction – Injunctions are court orders that require trademark infringers to immediately stop misusing the trademark. Think of an injunction as the court enforcement of a cease-and-desist letter.
- Issue an order for forfeiture – If the infringement occurred on tangible goods (if the infringer put your brand name or logo on a physical product), the court may order them to surrender those goods.
- Order monetary damages – The court may require the infringer to financially compensate you for the harm you suffered, as well as to pay any other penalties that may be required under law.
It is important to note that every case is unique, and whether monetary damages are awarded will depend on the facts of the case. If the court orders the defendant to pay damages, the amount they have to pay will depend on a number of factors including the type of infringement that occurred, the amount of profit the defendant made through the infringement, and the harm your business suffered because of the infringement.
Ask an Experienced Trademark Attorney
If you believe your company has suffered due to trademark infringement or if you are not sure whether your business name or logo are properly protected, feel free to reach out to us at The Brand Protected. Learn more about how working with an attorney can protect your business and set up a free consulting call on our website.