Trademark Infringement. Do you need a trademark litigation attorney to enforce your trademark claim?
Help! Someone Copied My Trademark! What Can I Do About It?
Let’s face it—there is nothing more frustrating than learning that someone has copied your work. From grade school to adulthood, the feeling remains unmatched. So, you’ve spent time, money, and energy creating and registering your trademark, and you just learned that someone else is using it—what can you do? Can you stop them? Do they owe you money? Well, in the words of all great lawyers—it depends.
Do I have the Right to Take Action?
Trademark infringement occurs when someone uses a trademark (such as a brand name, logo, or slogan) that is identical or confusingly similar to a trademark previously used by someone else, without that owner’s permission. A trademark serves as a source identifier, meaning that when consumers see a mark, they know the source of the goods and services associated with that mark. The problem then, in the eyes of the law, is that the unauthorized use of a mark will confuse consumers into thinking that the goods or services come from the trademark owner, harming the owner’s brand reputation and potentially causing financial loss.
Now, there is a difference between owning a trademark and having a registered trademark. As soon as you begin using your trademark in association with your goods and services, you become the trademark owner. That’s good, because it does give you certain protections; however, those protections are limited in scope and only apply to the geographic region you are in. Once you register your trademark with the US Patent and Trademark Office, you have nationwide federal protection. The owner of an unregistered mark can still take legal action against an infringer, but the owner’s options and protections may be limited. Let’s assume, for the purposes of this discussion, that you have already registered your mark, and you’ve discovered a potential infringer. Remember, just because your mark is federally registered, that doesn’t mean a slam dunk win automatically. When considering what course of action to take and the likely outcome, here are some things to consider:
Do I file a Trademark Opposition, a Trademark Cancellation, or Trademark Infringement lawsuit?
First, determine whether what you are dealing with is someone trying to register a mark you believe will infringe on your mark, or whether the mark is already infringing, i.e. currently being used in commerce. This will determine the type of proceeding you can bring: an opposition, cancelation, or a lawsuit.
Opposition
If your mark is federally registered, and you discover that someone is trying to register a new mark that you believe will cause confusion with your mark if it is allowed to register, you can file an Opposition with the Trademark Trial and Appeal Board (TTAB). The TTAB is an arm of the USPTO that handles disputes primarily concerning the registration of trademarks, not their use in commerce.
After a trademark application is published in the USPTO’s Official Gazette, you have 30 days to file an opposition to registration. You will include information in the opposition to show the TTAB how the applied-for-mark is likely to cause confusion with your mark. Once an opposition is filed, it initiates a proceeding before the TTAB, which functions essentially like a court case, but without live testimony or a jury.
Cancelation
If you believe a registered trademark should not have been registered for reasons such as a likelihood of confusion, abandonment, or fraud, you can file a petition to cancel the mark at any time. For likelihood of confusion claims, the petition must be filed within five years of the mark’s registration. For genericness, fraud, or abandonment, there is no time limit to file a cancellation.
Lawsuit
If you discover that someone is truly infringing on your mark by using a confusingly similar mark in commerce, your attorney will file a lawsuit in federal District Court, because trademarks are governed by federal law. If you have gotten this far and you don’t have an attorney—it’s time to get one! This isn’t something you can do on your own. It is important that your attorney be communicative, responsive, and, most importantly, well-versed in intellectual property litigation. It is a fallacy to think that the same attorney who handled your divorce can handle this—they’re very different! Intellectual property litigation is full of nuance, meaning that your greatest chance of success will be in having an attorney who is a specialist, not just someone with a bar card. Your attorney will meet with you and evaluate the strength of your case and discuss the proper next steps, including whether your case is an opposition, a cancelation, or a lawsuit in District Court. If you don’t have an attorney, pause this, make an appointment with Nate, and come back. Here are some things your attorney will consider:
Is the Infringing Mark Actually Being Used in Commerce?
You might remember from your own trademark application, the USPTO is interested in whether or not the mark is being used in commerce. If the infringing mark isn’t being used in commerce, meaning it is not associated with the sale of any goods or services, you might not have much luck pursuing action. For example, if the mark is merely describing an ingredient, quality, characteristic, function, or feature of something, the USPTO will not deem that as a “use in commerce.” However, do not let the temporal aspect fool you—an applied-for-mark can be filed under an “intent-to-use” basis, which the USPTO does consider use in commerce. These subtle differences are important factors in deciding what kind of action you may or may not be able to pursue.
Are the Goods and Services the Same?
The US Patent and Trademark Office separates all goods and services into 45 different classes, each class covering a variety of different things. Here’s a list of the classes. Remember, a trademark serves as a source identifier for goods and services—a nearly automatic connection in the mind of the average consumer between the mark and the goods or services associated with that mark. For example, if you see someone walking around in a pair of high heels with a bright red bottom, I bet you know those are Louboutins (even if you can’t spell it). Anyone who wants to put a red bottom on their shoes is going to have to think again. But what if your trademark and someone else’s trademark are identical? How do you decide what to do? That feels like infringement!
First, you have to determine whether or not the goods and services you offer are the same or different as the goods and services the potential offender is offering. How do you do this? Look at the class. For example, there are two federally registered trademarks for “Bad & Bougie.” How can that be? Isn’t one of them guilty of infringing on the other? Doesn’t the senior mark holder have a right to file a cancelation, like we just talked about? The answer is it depends. In the case of “Bad & Bougie,” the answer is no, because the marks are associated with completely different goods that are registered in different classes. Bad & Bougie #1 is registered in Class 025 for clothing, while Bad & Bougie #2 is registered in Class 003 for hair care, such as shampoo and conditioner. In the eyes of the US Patent and Trademark Office, this is okay, and you would probably not have a case to pursue. Keep in mind, however, that there are intervening factors – including but not limited to each party’s target consumers, trade channels, and marketing – that could impact this analysis.
Are the Marks the Same?
It might seem obvious, but the next thing you want to consider is if the mark you are wanting to challenge is identical or confusingly similar to the mark you own. Sometimes, it’s kind of a no brainer—you own the mark Sharpie, producing everyone’s favorite permanent marker, and you find out that someone else has started using the mark Sharpie on a line of black pens, or is trying to register the mark “Sharpie” for writing utensils. This identical mark might confuse consumers into thinking their goods came from you, causing potential brand damage or financial losses. Additionally, be on the lookout for marks that are similar, but not identical. For example, Sharpy, or Sharpee could also be an issue, if the goods or services are the same.
Your attorney will walk you through any other relevant factors and advise you accordingly. It is worth repeating one more time—you cannot do this on your own, no matter how many super informative blog posts you read. Oppositions and cancellations are functions of the TTAB – that is, they are used to control whether someone can register a mark or keep their registration. Litigation is used to control infringement. You can launch both a lawsuit and an opposition simultaneously, but the lawsuit will control and the oppo will be suspended.
What Happens Next? Don’t Come Out Swinging—Yet
Alright, so your trademark is federally registered, and the new mark is for similar goods and services, and it’s currently being used to sell those goods or services, so it’s time to take action. In our ever-expanding and increasingly connected world, it can sometimes be hard to determine whether or not someone willfully copied your trademark, or whether some stranger on the other side of the country innocently had the same idea. (This is obviously situationally dependent, so consult your attorney for a tailored approach). If your trademark is registered and you know you have superior rights to use your mark, you’ll start by sending a cease-and-desist letter, or otherwise initiating some sort of conversation with the other party. This is something your lawyer will do for you! Most, if not all, people who have innocently infringed don’t want to incur the stress and cost of a legal battle they won’t win (because you were smart and registered your trademark!) With any luck, the offender will immediately stop their use, and you can carry on.
If the infringer responds to your letter but refuses to cease using the mark, you might be able to negotiate terms for resolving the issue, such as payment of an agreed-upon amount in damages, or issuing a license to the other party so that they may legally continue their use with your permission. If the infringer declines to respond, or if they refuse to negotiate, you’ll have to decide whether you want to pursue further legal action. In making this decision, your attorney will assess and discuss with you the likelihood harm to your brand, the likelihood of success of the suit, and your personal budget.
What Does a Lawsuit Look Like?
Assuming the offender has refused to cooperate, your attorney will prepare a Complaint, which will outline for the court your ownership of the mark, the infringing activity, how the infringement is causing harm, and what type of relief you are seeking. The case will then proceed through discovery, with both sides providing requested evidence, including documents, emails, and witness testimony, including depositions.
Often, the parties will attempt to settle the case before it goes to trial to avoid the expense and uncertainty of trial. Settlement may involve the defendant ceasing use of the trademark, paying damages, or entering into a licensing agreement.
How Can I Ensure That My Trademark is Protected Against Others?
The gold standard of protection is federal registration. Now, depending on what mark you want to use, federal registration may be difficult. The USPTO may decline to register your mark because the mark is purely descriptive, ornamental, or maybe even federally illegal.
If your trademark is registered, you’re off to a good start! Don’t forget to keep using your mark in commerce and continue to build as much notoriety and goodwill around your brand as possible—it makes disputes much easier to win, in the long run.
If your trademark is not registered, but you want it to be, click here to read about the process, and then schedule a call with us.
As always, it is vital to talk through any and all of these issues with your attorney. A good intellectual property attorney can help you lay out your options and decide which path is right for you.
The post is for informational purposes and is not legal advice.
