If you own a trademark, it’s essential to protect it from infringement!
Not only is it personally offensive, but trademark infringement can hurt your business in many ways, including damaging your reputation, reducing your sales, and causing a variety of legal issues.
In today’s post, we’ll be exploring how to protect your trademark and what you should do if your trademark is being copied by a competitor!
What Is Trademark Infringement?
As defined by the United States Patent and Trademark Office (USPTO), “trademark infringement” is the “unauthorized use of a trademark on or in connection with goods and/or services in a way that is likely to cause confusion, deception, or mistake about the source of the goods and/or services”.
To put simply, trademark infringement occurs when someone uses a trademark that is similar or identical to your trademark without your permission.
This manner of infringement can take different forms, but is generally, when someone uses a mark in a way that could create confusion with your trademark or “dilute” your mark’s distinctiveness, as was alleged in the recent case of Chipotle v Sweetgreen, regarding Sweetgreen’s new “Chipotle Chicken Burrito Bowl”, later renamed the “Chicken + Chipotle Peppers Bowl”.
Essentially, trademark infringement can arise when there is a similar brand name, product name, logo, slogan, or other source-identifying mark. And it can also occur both online or offline, in advertising, marketing, and/or sales.
The Impact of Trademark Infringement
When trademark infringement occurs, a business can be serverly impacted in various ways.
First and foremost, it can cause confusion among consumers, which can damage the reputation and goodwill of the business.
If consumers are unable to distinguish between the original trademark and the infringing trademark, they may end up purchasing products or services that are of inferior quality or have no connection to the original brand, leading to a loss of sales and customer loyalty.
Moreover, trademark infringement can also impact a business’ ability to expand its brand and product offerings.
When a third party uses a trademark that is similar or identical to the original trademark, it can create confusion in the marketplace and make it harder for the business to build brand awareness and recognition. This can hinder the business’s ability to enter new markets, launch new products, or engage in strategic partnerships or collaborations.
Lastly, in addition to these tangible impacts, trademark infringement can also have intangible effects on a business’s reputation and brand identity.
If a business fails to protect its trademark, it may be perceived as weak or ineffective in the eyes of consumers, competitors, and other stakeholders. This can damage the business’s reputation and make it harder to attract and retain customers, investors, and other key partners.
Overall, trademark infringement can have significant negative consequences for a business and its bottom line.
How To Protect Your Trademark
Now that we’ve defined trademark infringement and discussed the potential impact on your business, here are some steps you can take to protect your trademark:
1. Register your trademark
This goes without saying, but the absolute best way to protect your trademark is to register it with the appropriate government agency. In the United States, you should register your trademark with the USPTO.
Registering your trademark gives you legal rights to use the trademark in commerce across the country and helps you protect your mark from infringement.
2. Use your trademark correctly
Always use your trademark consistently and correctly! Your trademark should be used as a “source identifier” only, and not as a verb or common noun. This will help establish your trademark as a distinct identifier of your products or services.
3. Monitor your trademark
Keep a diligent eye on the marketplace (online, offline, and especially, the USPTO) to ensure that no one else is using a similar or identical trademark to yourself!
Create a regular and consistent schedule to search for infringers, whether you conduct this search weekly, monthly, quarterly, etc., OR hire a monitoring service, like ours, to handle this for you!
Trademark law requires that all trademark holders “police” aka montior their trademark against misuse and infringement or else, risk cancellation of their mark.
Many entrepreneurs do not realize that a registration certificate prevents against some future conflicts, but it does NOT prevent against all.
For example: a USPTO Examiner may issue an Office Action that blocks a “confusingly similar” trademark to your own from proceeding to registration. However, your competitor still has an opportunity to overcome this Office Action if they submit a strong enough response that adequately addresses the Examiner’s concerns. And because this process is subject to human error, there may be conflicts and other factors out there that USPTO Examiners miss for a variety of reasons we can’t control. Very commonly, there are cultural issues that can be missed and lost in translation.
So, it is your responsibility to ensure that no other business or individual uses a similar or idential trademark to your own without permission or registers a “confusingly similar” trademark that would weaken the strength of yours.
In the above scenario, you would want to oppose the registration of that mark during its Publication Period (the 30-day period where the public can oppose the registration of a trademark for good cause). But if you’re not monitoring your mark properly, you can miss this crucial window!
After all, the USPTO will NOT notify you of any copycats or “confusingly similar” trademark applications that make their way to Publication! And you don’t want to miss this window as doing so will result in more legal fees and headache.
That’s why our Firm offers a trademark monitoring service to help you with policing your mark post-registration. That way you can always get ahead of any potential issue! We’ll search for conflicting brands and marks across the USPTO, state registrations, domain name registrations, Google, social media, and more on a consistent scheduled basis (either monthly or quarterly). If interested, you should book a Trademark Discovery Call to learn more about this service.
Failing to adequately monitor your trademark can result in harm to your business’ reputation (inferior knock-offs, for example), decline in profit, and potential cancellation of your trademark!
4. Educate your employees
Familiarize your employees with your business’ trademark portfolio! You should make sure that your employees understand the importance of your trademarks and steps that they can take to protect them, as well as, train them to recognize potential trademark infringement and to report it to you immediately.
5. Be Proactive!
It’s best that you register your mark as soon as possible! You don’t want to wait for someone to infringe on your trademark before you finally protect what’s rightfully yours! It’ll be A LOT more stressful then. Be proactive and take steps to protect your brand and mark before any problems arise.
What If My Trademark is Infringed?
Firstly, we’re sorry to hear that has happened to you. Infringement is such a yucky feeling. If you discover that someone has infringed on your trademark, here are some of the steps you should take:
1. Collect Evidence
Monitor the infringing party’s activities, and collect and document evidence of infringement.
When collecting evidence, especially screenshots, make sure the evidence includes dates and times somewhere on the page. You can opt to save website pages as PDFs for proper timestamps. And for Apple users, be sure to set the date and time to show up on your desktop’s toolbar. Timestamps always come in handy!
2. Making Contact with the Infringer
If you have in fact registered your trademark, you can send a cease and desist letter to the person or company that is infringing on your mark. This letter should demand that they stop using your trademark immediately.
Our Firm can provide you with an editable cease and desist template, or draft a customized cease and desist letter to send on your behalf.
However, if you have not registered your trademark, then your next course of action is to obtain legal counsel! DO NOT CONTACT THE INFRINGER!!
More often than not, you will make the situation worse!
Cease and desist letters are most effective when/if you have a registered trademark. Sending one without having obtained an official registration is almost like an empty threat.
And even if you have filed your trademark, you should still not send a cease and desist letter until your mark is officially registered! You don’t want to encourage the infringer to find ways to block/”oppose” your application, like during your mark’s Publication Period. You want to be completely finished with registration process, with certificate in hand!
Furthermore, conversations between opposing parties over infringement often become particulary tense! A common mistake we find is that as tempers rise, the conversation quickly turns into threats of legal action. Without realizing, you can in fact encourage the other party to take legal steps that they were not even considering, like filing a trademark application!
And once that application is filed by your infringer, you can reasonably expect $10,000+ in legal fees and potential litigation to fight for your trademark rights!
Keep in mind: Though you may be the originator of the trademark, filing your application after your infringer will not sufficiently fix this problem. The USPTO processes and examines applications in the order that they are received. So unless there are previously registered or previously filed applications in conflict with your opponent’s trademark application, your subsequent application will not be reviewed or considered in the examination of your infringer’s. At that point, you’ll need to have a conversation with a licensed trademark attorney immediately to discuss your next steps if you wish to fight for your mark!
Need Some Help?
Trademark infringement is terrible! If you find yourself in this predicament, we sincerely empathize with you. We know, personally, how frustrated you must feel. If you need legal assistance, please book a Trademark Discovery Call below.
3. Filing a Lawsuit
If an infringing party refuses to stop using your registered trademark after receiving a cease and desist letter, you may need to consider mediation or arbitration to resolve the dispute, or filing a lawsuit to protect your interests.
Mediation and arbitration can be less costly and less time-consuming than going to court, and can help you reach a resolution with the infringing party. However, whether mediation or litigation is the best course of action should be decided between you and your attorney.
Final Thoughts
In conclusion, protecting your trademark is crucial to the success of your business! By registering your trademark and taking proactive steps to protect it, you can minimize the risk of infringement!
All entrepreneurs and businesses can benefit from trademark monitoring services, and should be setting aside a budget for brand protection!
That way if your trademark is ever infringed, you’ll be better prepared to take action quickly to protect your legal rights and your business!
