Welcome back! So I hope you read this article but if you didn’t go back and read that really quickly. Anyway, you’ve been following the rules and monitoring your trademarks just like you’re supposed to, which is awesome.
But, wait what is that? A YouTube channel called the same thing as your brand name? And they sell similar products? Oh no. Not today!
So what happens when you find an individual or other company infringing on your mark? Or you have been appropriately monitoring the USPTO website and you’ve found someone has filed a mark very similar to yours and it’s gone to publication.
Let’s review some of the steps you should take to handle infringement or the possible registration of a mark that you believe will harm your brand.
Infringement in the Marketplace
Document the Infringement:
First things first, before you do anything document the other person’s use of your mark. You should take screenshots if the infringement is online. If the infringement is happening in print keep and make copies of the article or marketing material you saw bearing your mark.
You need to do this for two reasons. One, you are building a body of evidence of the infringement in the event that the infringer does not comply with your requests to stop using your trademark and you need to take the ultimate legal action. And secondly, because this person may respond well at first and cease using your mark, but in a few weeks months or even years start back up again and you will want documentation of the first offense.
Send a nice letter/email/or even a DM:
The first step you can take is to send a nice letter or email to the person using your trademark and ask them to take it down. Sometimes that works simply because the other person didn’t know they were doing anything wrong.
More often than not the person on the other side of the infringement genuinely has no idea that what they are doing is against the law. Approaching them from this mindset and framing your request in a nice manner will usually yield great results. Politely provide them with your trademark registration information, and explain how their use of your mark is an infringement. Respectfully request that they stop using it and take down anything with your mark on it.
Hopefully, this will work. But, if it doesn’t…
Send a less than nice email:
The reason I say this is because it is more cost effective for you to send a less than nice email requesting this person to stop using your mark than it would be to have an attorney do so at this stage in the game.
Let this person know you will take legal action if they refuse to stop using your trademark. And remember, if it isn’t exactly your mark but you feel it is too close, then I would request them to stop. If it makes you uncomfortable, or clients or customers are confusing your brand with this infringing brand then it is too similar and should not be happening. Be sure to continue to document any infringement or use of your trademark.
When all else fails:
If none of the above works, get an attorney involved to send a cease and desist letter. If you have a trademark registration the attorney that handled your application should be the one to help you protect the mark. They can send a cease and desist letter on official letterhead that will let this person know you are very serious about stopping them from continuing to use your mark.
Sometimes that is all it takes, as I have mentioned in the past people seem to be afraid of attorney’s and this scare tactic will often work fast. If it doesn’t, well then you may need to file a lawsuit.
Filing a Trademark Opposition
If the infringement isn’t happening in the real world yet, or even if it is, but the infringer has filed a trademark application then you have the option to oppose the mark if the USPTO lets it pass to publication. This means the USPTO didn’t think the mark would cause confusion for consumers, but that doesn’t mean that it won’t, or that you can’t fight them on it.
An opposition is filed by a mark owner that believes their brand will be harmed if the applicant’s mark is approved. The process is similar to litigation. You really need an attorney to handle this, and it can be time-consuming and costly. The opposition takes place in front of the Trademark Trial and Appeal Board or TTAB-so you’re no longer in front of a USPTO examining attorney like you are when dealing with the application process.
Most applicants will settle before the opposition begins full force. This gives you time to discuss with the other side what it is about their mark that worries you and requests that they make changes to their application (where allowed) or drop it all together and look for a new name for their business or brand. An opposition is a pretty big thing to undertake, so be sure that you know what you want the outcome to be, and work closely with your attorneys to find a resolution that is good for your brand but also be willing to work with the applicant. If the USPTO did not find a likelihood of confusion as they so often do, the threat might not be as big as you perceive it to be. Attorneys can get creative and find ways to preserve your brand and your marks without completely dismantling the applicant and their business.
In the End…
At the end of the day, you have a responsibility to police your marks. If you are diligent about doing so, you will undoubtedly come across people or businesses using your trademark and that is not ok. You must take certain steps to stop them from doing this to preserve what you have built. Keep in mind though that many people don’t realize what they are doing is wrong and come from a place of resolve, not conflict.
If you need more help monitoring your marks or handling an infringer email me at Shannon@montgomerypllc.com I am happy to help!
Please note that this is not meant to be legal advice for you or your situation, this is merely some legal research and knowledge on the given topic.