What to Do If Someone Uses Your Trademark
When a trademark is infringed upon, it can have serious effects that result in the loss of profits. Learn what to do when that happens.
From McDonald’s golden arches to Nike’s “Just do it,” trademarks can be incredibly valuable. So it’s no wonder that protecting trademarks is a big deal. An adequately protected trademark allows a business to build its brand, increase customer loyalty and protect its brand identity.
Trademark infringement is when a trademark is unlawfully used by another business and can have a severe negative effect. For example, it can cause confusion, weaken the brand and even result in a loss of profits.
What Is a Trademark?
A trademark is a brand name or mark that allows businesses to distinguish themselves from competitors. It protects the intangible value of their name, symbol, slogan, or product design and can include colors, sounds, look and feel, and scents.
How to Obtain a Trademark
To obtain federal trademark protection, businesses must file a trademark application online with the United States Patent and Trademark Office (USPTO). The application requires careful attention to detail, as well as submission of a fee.
The USPTO then reviews the application. This can take several months. If the USPTO determines that the proposed trademark can be registered, it will publish the mark in its “Official Gazette.” Other parties that believe the trademark registration may damage them have 30 days from the publication date to oppose it. If nobody objects, the USPTO registers the mark and sends a “certificate of registration.”
Not all applications are approved. To help increase the chances of a successful application, businesses commonly work with an intellectual property attorney to ensure the application is completed correctly.
How to Protect and Build Value in Your Trademark
To protect a trademark, the owner must file specific maintenance documents to keep the registration alive. In addition, trademark owners must check the status of their registration regularly.
When to Seek Legal Counsel
The USPTO does not police trademarks. Therefore, it is up to the trademark owner to take action by consulting with an intellectual property lawyer if they see the trademark being infringed upon.
Did Trademark Infringement Take Place?
Attorneys generally begin by reviewing the facts and assessing whether trademark infringement occurred. Trademark infringement only happens when the trademark is used on competing goods and services and when customers are likely to be confused.
Just because two companies in two different industries use the same name does not mean that trademark infringement has occurred. If the companies sell entirely different products or are in different markets, there may be no infringement.
Sending a Cease and Desist Letter
If an attorney believes trademark infringement likely occurred, they will often take action by sending a “cease and desist letter” to the other company. The letter outlines the alleged violation and demands the other company cease use of the confusingly similar mark. The letter often threatens a lawsuit if the company doesn’t comply within a set period.
Filing a Trademark Lawsuit
If the infringing company doesn’t respond to the letter, refuses to comply, or continues to use the trademark, the next step is for the attorney to file a lawsuit or seek administrative action by the USPTO. The attorney may request that the court force the infringer to stop using the trademark and request that the court order money damages accordingly.
Doug Griess of Hackstaff Snow Atkinson & Griess, LLC, is a top Denver business attorney with expertise spanning various industries. Specializing in business law, litigation, intellectual property, tax law, and dispute resolution, John Snow and Doug Griess offer an in-depth understanding and knowledge of general corporate rules and regulations and are a trusted resource for business owners throughout Colorado.