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infringing upon a trademark

What You Should Do if Someone is Infringing Upon Your Trademark

By John DiGiacomo

Do you have a registered trademark that is being infringed upon? Check out this helpful guide to put a stop to it immediately.

The U.S. Patent and Trademark Office receives half a million applications every year. About three-quarters of them get registered. That leaves a lot of people and companies without trademark protection.

It also leaves a lot of people and companies open to trademark infringement. Of course, not all cases have the intention of causing harm and are accidental. Others do have malicious intent.

In all cases, they’re infringing upon your rights as the trademark holder. Trademark infringement is a complicated situation that requires legal expertise. In this article, we explain the steps you should take if you feel your registered trademark is being infringed upon.

What is Trademark Infringement?

When you start your business, you protect yourself from fraud. You make sure your computers have anti-virus and anti-malware installed to keep from getting hacked.

You spend hours making sure your site is working and your ordering process is flawless. You brainstorm with partners and peers on ways to market your brand.

You design logo after logo until you come up with the perfect one. You go through the trademark process with the U.S. Trademark and Patent Office. Before you know it, your name and logo are all yours!

That means, that only you can use your business name and logo. There are some confusing exceptions. For instance, Delta Airlines and Delta Faucet Company share the same name but have nothing to do with each other.

Trademark infringement happens when there is confusion between the use of two logos and whether it’s getting used on competing goods and services.

There’s 100% chance you’ve never tried to buy a plane ticket and ended up with a new faucet instead. There’s no confusion between the two Deltas, so there can be both an airline and faucet manufacturer with the same name.

Now, you trademarks do get infringed upon all the time. If you’ve ever called all tissue “Kleenex,” all lip balm “Chapstick,” or all headache medicine “Asprin,” you’ve technically infringed upon a trademark.

Don’t worry, these specific cases (and Thermos, Band-Aid, Velcro, etc.) get categorized as generic trademarks. This happens when a product is so significant or popular that it becomes synonymous with an entire class of products.

In other words, if you ask a maintenance worker where the building’s Dumpster is, you won’t get sued.

How You Know Someone is Infringing Upon Your Trademark

If you suspect someone is using your company name or company logo without permission, you have to prove it. A court of law takes many things into consideration when hearing a trademark infringement case.

The first thing they’ll do is apply the “likelihood of confusion” test. It’s actually an umbrella term used by various federal courts. Most courts use the same factors to figure out if a logo use causes confusion.

Their goal is to determine if a consumer will get confused by the products which can damage your business. The 6th Circuit Court uses an “8-Factor Trademark Infringement Test.”

What You Should Do If Your Trademark Gets Infringed Upon

If you pass the test and can prove confusion, your next step should be contacting a trademark infringement attorney. They specialize in handling cases like yours and will guide you through the legal process.

Send a Cease-and-Desist Letter

The first step that’s most common in a trademark infringement case is sending a cease-and-desist letter. You can do this on your own, but you should get legal advice to ensure you’re using proper terminology and covering all your bases.

The letter demands that another entity stops using your trademarked name or logo at once. It’s possible they didn’t realize they were using a registered trademark and stop using it.

If their intentions were a little more nefarious, they could ignore your letter and continue using your trademark. In this instance, you want to speak to a lawyer about filing a lawsuit.

File a Lawsuit

If the person or entity receives your letter and continues to use your trademark, it’s time to file a lawsuit. The suit will get filed in federal court if it spans more than one state. If the infringement is local, it may get filed in a state court.

The purpose of your suit is to stop your trademark from getting infringed upon. But you may be able to collect damages if:

  • You can prove your business got hurt financially as a result of the trademark infringement.
  • You can prove the alleged infringer made money from using your trademark.

There a few things to remember if you file a lawsuit. The first is that you must file for a trademark in the first place!

In court, you can argue on “common law” rights to a name. But, your chances for winning your case are greater if you filed for federal trademark protection with the USPTO.

As an entrepreneur or small business owner, you have a lot on your plate when you’re getting started. Filing for a trademark may be the last thing on your mind. But if you don’t and you find someone is using your name or logo after you’re operating and established, the fight becomes who used it first.

The other note of importance is that you must actively use your trademark. You can’t stop other businesses from using a name or logo unless you’re using it in the marketplace to identify your goods or service.

A court will give you minimal protection if you’ve held a trademark for years but haven’t used it.

How You Can Prevent Trademark Infringement

When it comes to prevention, you can ensure no one is infringing upon your trademark by monitoring it. Like not actively using your trademark, you can lose some of the federal protections by not monitoring it.

Specialized software is available that monitors trademark infringement. Reputable trademark infringement attorneys also have this software and can monitor for you. This is a proactive step in protecting your company name and logo that puts a stop to unauthorized uses.

A New Kind of Law Firm for a Data-Driven World

Your business and its trademark are unique. Don’t let anyone get away with infringing upon your livelihood. If you suspect someone is, you may need help proving it.

You need a lawyer that knows the effect of having your trademark infringed upon has on your business. That’s where Revision Legal comes in.

We’re a law firm that understands the connections between law, technology, and business. We’re experienced litigators who fight to protect online businesses.

If you feel your rights are being infringed upon, we can help. Contact us today and let us know how we can give you back your peace of mind.

Put Revision Legal on your side