Trademark enforcement is non-negotiable for trademark owners

Trademark Law0 comments

Just found a trademark infringer riding your coattails?

Congratulations!

Wait. What? 

That’s a weird thing to say to someone who’s just discovered trademark infringement, isn’t it?

Well, not really.

After all, you know what they say:

“They can imitate your style, but they can’t imitate your creativity!”

“People who copy will always be one step behind.”

“Imitation is the sincerest form of flattery.” 

Sure, it all might feel a little hollow when you’re dealing with a copycat, but it’s true.

Because as much as it SUCKS to find someone copying your blood, sweat, and tears, it also means you’re doing something right.

That said…

Trademark enforcement is non-negotiable as soon as you become the proud owner of a federally registered trademark.

So go ahead and feel your feelings about it.

But when you’re ready, dust yourself off, and let’s address that infringer.

**Just before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

Trademark law and enforcement 

Trademark law imposes a duty on you – a registered trademark owner – to actively police your mark(s).

That means you’re responsible for consistently monitoring your mark(s) for any unauthorized use.

It also means you’re on the hook to address trademark infringement the moment you identify it.

Maybe it seems a little strict, but registering a trademark is no easy feat.

You’ve already done your due diligence and chosen a strong trademark, ran a clearance search, gotten an attorney to run a comprehensive check, and – finally – you got the green light.

Why wouldn’t you do everything in your power at this point to protect your hard work?

It’s essential for preserving your brand identity, legal protection, and market exclusivity.

(All of which you need to ensure the long-term value of your business.)

Now that you’ve spotted a trademark infringer, it’s time to take action. 

Sending a cease and desist letter for trademark infringement

Action number 1 when you spot trademark infringement is to send a letter that basically says:

You can’t use my trademark!

Because, while you have a responsibility for trademark enforcement, you also have exclusive rights to use your trademark in connection with the goods and services designated in your registration.

No one else has those rights.

You get to stop another business or person from using the same – or even a confusingly similar – trademark in connection with the same – or again, confusingly similar – goods or services.

If there’s even a chance that a consumer would believe the goods or services delivered from the trademark copycat actually came from you, a likelihood of confusion exists.

[Likelihood of confusion = your trademark is confusingly similar to another trademark, and the goods or services are related so that a consumer would likely mistakenly believe the related goods or services came from the same source.]

So, let’s assume you’ve already determined a likelihood of confusion exists.

Your next step is sending that cease and desist letter, which serves 3 purposes:

  1. Notify the trademark copycat that you believe they’re infringing on your trademark rights.
  2. Notify the trademark copycat of your demands (aka what next steps they can take to rectify the situation).
  3. Reach an early resolution so you don’t have to spend a ton of money and resources on litigation (hopefully).

Here’s what a cease and desist letter generally includes:

  • An outline of YOUR rights, from a description of your trademark and an outline of the goods and services your trademark is used in connection with to the date you first started using the trademark 
  • An overview of the copycat’s trademark, the goods and services they’re using it in connection with, and why their trademark is infringing on your rights 
  • Your demands, which might include stopping any use of the infringing trademark and agreeing not to use the infringing trademark again in the future to taking down web pages, deleting social media campaigns, ceasing use of a domain, or even paying YOU the profits they made as a result of their infringement
  • A specific date for the trademark copycat to respond to you by

Many times, simply seeing “cease and desist” on attorney letterhead is enough to stop a trademark copycat, and a resolution can be reached without any further action.

But what about when a cease and desist letter isn’t enough, and the trademark copycat ignores you or continues their shenanigans?

It’s time to consider your next steps.

Opposition proceedings for trademark enforcement

Let’s up the ante a little…

Say your trademark infringer had actually taken things one step further and filed an application to register their infringing mark with the United States Patent and Trademark Office (USPTO).

The AUDACITY!

You likely asked the infringer to expressly abandon their application in your initial cease and desist letter. 

Express abandonment occurs when a trademark applicant voluntarily withdraws their application. There’s no fee for them to do so, but they don’t get a refund of the filing fees they initially paid to the USPTO with the application.

If the trademark copycat thumbed their nose at your cease and desist letter – and their application makes it to the publication period – it’s time to explore opposition proceedings.

Quick reminder: a trademark is “published” in the online Trademark Official Gazette for 30 days during the publication period. 

Any member of the public who thinks they’ll be harmed by the registration of that trademark may oppose it.

If no one opposes the mark during that 30-day period, the application is on its way to registration. 

Opposition proceedings are handled by the Trademark Trial and Appeal Board (T-T-A-B). 

You initiate opposition proceedings by filing a complaint and arguing that the trademark copycat’s infringing trademark application should not be allowed to reach registration. 

Once you’ve filed your complaint, your copycat has to file an answer – or their application will become abandoned.

If they actually file an answer, a discovery and settlement conference must take place, and pursuant to the Federal Rules of Civil Procedure, a whole host of things must be discussed. 

Hopefully, you’ll be able to settle the issues. 

But if not, each side has to make its initial disclosures (basically a preliminary list of any witnesses or documents each side plans to use to support their case) before discovery can commence.  

Discovery is the legal process you can use to compel the other party to produce legal facts and documents so you can examine the strength of their case.

The biggest difference between opposition proceedings with the TTAB and litigation is that there is no live trial. 

Instead there are testimony periods – you submit your evidence as the opposing party. Then your copycat submits theirs. And you get a rebuttal period. 

Each party then files their trial brief, and you, as the opposer, have a chance to submit a rebuttal brief.

Finally, the TTAB will issue its written decision. 

(Unless either party specifically requests oral argument to supplement their written evidence, in which case oral arguments are heard before the TTAB issues its decision.)

The TTAB’s decision will indicate whether your opposition is sustained or dismissed.

But keep in mind that TTAB proceedings only allow you to argue against registration. You cannot obtain damages, attorneys fees, or injunctive relief. 

If you wish to seek those things, it may be time to say, “See you in court.”

See you in court for trademark infringement

It all comes down to this.

Despite your best efforts to enforce your trademark peacefully, if you’re dealing with a particularly stubborn trademark copycat and a resolution can’t be reached, you may decide to file a civil action in either state or federal court.

A majority of the time, trademark owners choose to sue for infringement in federal court.

15 U.S.C. § 1117 outlines the statutory remedies available to you: 

  • Injunctive relief – a court order that requires a business or person to either do a specific action or refrain from doing a specific action 
  • Actual Damages – could include lost profits as a result of their infringement, loss of goodwill because of another business using an infringing mark, or even royalties that would have been paid if they had licensed your trademark
  • Treble damages – 3 times the damages because they willfully infringed on your trademark 
  • Statutory damages – unlike actual damages, you could choose to recover the amounts outlined in the statute, which can be as high as “$2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just.”
  • Attorney’s fees – for having to initiate litigation 
  • Costs – paid for litigation 

Know all the tools in your trademark enforcement toolkit

Out of all the trademark enforcement options, it may sound pretty amazing to stick it to the trademark copycat by taking them to federal court and suing the pants off them.

But recent American Intellectual Property Law Association Survey Data shows that the cost of trademark litigation – if you make it all the way through trial – can be upwards of $500,000. 

And the cost will likely even exceed that number.

Plus litigation will probably take well over a year. 

If you’re facing trademark infringement, it’s important to reach out to experienced counsel to determine what next steps to take. 

Typically, court is the last resort. 

But it’s important to know that it’s a tool in your arsenal if you have a federal trademark registration that’s being plagued by a copycat.

Get help with trademark enforcement and stop your copycat from doing more damage.

 

Sign up for the exclusive podcast list and get trademark answers on the go.

At the beginning of your trademark journey? Choose a strong brand name for better protection.

 

I’m Nicole.

I understand both the legal world and the online business world and can bridge the gap for entrepreneurs that want to ensure all of their ducks are in a nice, neat row. Let’s protect your business so you can build your empire.

error: Content is protected !!