Taking Action on Trademark Infringement

Your business or product name can come to define your brand. Reliability, quality, trust and other features can become synonymous with your name and your name can be vital to building a long-lasting and successful business. Problems can arise when another company begins using the same or a similar name to you. Your customers may become confused and it is possible that you could lose business as a result.

By trademarking your business and product names, you obtain protection for them and are entitled to prevent other entities from using those names in a manner that could confuse customers. The question that can arise is what action should be taken if you find a business is using your exact business name or a similar variant?

Not a Trademark Infringement

Even though a business has taken your trademark name, it may not qualify as trademark infringement. Your registered trademark does not prevent others from using the same trademark if it is used in unrelated industries or for unrelated goods. When determining whether or not there is trademark infringement, good questions to ask yourself are whether or not your customers are likely to begin purchasing products or services from this other business believing that they are you and whether you are likely to lose business.

Send a Cease and Desist Notice

A cost effective first step if you believe there is trademark infringement is to send a cease and desist notice to the business. This notice informs the other business (or individual) of your trademark rights and requests that use of the trademark cease. Generally, the notice will indicate that failure to respond to the request will result in the commencement of legal actions. It may be beneficial to have a lawyer who understands trademark law prepare this letter on your behalf.

Negotiate

In the event that your cease and desist letter is ignored or the other party refuses to stop use of the trademark, negotiation is an option. In some situations, negotiating a settlement can be a better solution than taking the other party to court. There is no guarantee that a court will rule in your favor regardless of how strong a case you believe you have.

The opportunity to negotiate does not end once a legal action has been commenced. It is possible to negotiate a settlement during an ongoing action. For a settlement to exist, both parties must agree to it. The settlement may involve the payment of money, limits on use of the trademark, payment for a name change and any other terms agreed to between the parties.

Take it to Court

If negotiation does not result in an agreeable outcome, you can take the case to court. The court will either give a verdict in your favor or against it.

Don’t Take Action

You do have the option of not taking any action against any business that has conducted trademark infringement. However, not taking action can severely affect any trademark infringement action you pursue against other entities in the future. A failure to police your trademarks can result in a loss of rights as your trademark may become watered down and non-distinctive of your business.

If you believe that your trademark has been infringed, it is advisable that you speak to a trademark lawyer first.