When Does a Trademark Need to Be Defended?

By Angela Floyd

You created your trademark, and you used it in commerce. Consumers became familiar with you and your mark and your product. You created a successful brand, then, to your shock, you saw someone else using your trademark. Their actions may threaten your brand, so you want to stop them. When and how you can defend your trademark depends on several factors.

You created your trademark, and you used it in commerce. Consumers became familiar with you and your mark and your product. You created a successful brand, then, to your shock, you saw someone else using your trademark. Their actions may threaten your brand, so you want to stop them. When and how you can defend your trademark depends on several factors.

Basics of Trademark Law

Under U.S. trademark law, a trademark is a word, phrase, symbol or design, or some combination of these, that identifies a product and its source. In the U.S., trademark rights are based on two primary factors: your using the mark in commerce and the public's associating the mark with you. Registration with the U.S. Patent and Trademark Office (USPTO) is not required for trademark rights to exist.

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Trademark Registration

In the U.S., trademark registration can be your first line of defense, giving you several legal advantages, including the right to sue for damages in federal court. You also get the right to use the well-recognized registered trademark symbol, “®”, which provides notice that the trademark is registered and increases the amount of damages that you can seek. The “®” symbol may only be used if the trademark is registered. Your trademark will also be included in the USPTO registered trademark database so others will see your mark when searching for similar marks and the USPTO will not register identical or similar marks. If you have not registered your trademark, you still have trademark rights and can defend your mark, but damages may be significantly less.

Defense Basics

If you are actively using your mark, then, generally, no one else can use it or one that is confusingly similar. If you think your trademark is being infringed, your first step, typically, will be sending a “cease and desist” letter to the infringing party, demanding that it stop using the mark. If the infringer does not stop, you can file a lawsuit. When stopping dual use, though, several factors are considered, such as whether the mark is being used on competing or related products, whether consumers are likely be confused, or whether the trademark is being used in the same part of the country.

Suing for Damages

You may be able to get money damages in federal court if you can show consumer confusion and financial harm to your business. If the court finds intentional infringement, you may be able to get the profits the infringer earned by using the mark, as well as punitive damages, fines or attorney fees. If your business has not been damaged, a court can allow the other business to continue to use the trademark under limited circumstances that will prevent consumer confusion. You may also consider a lawsuit using dilution laws to defend your trademark if your mark is famous and the infringer’s use would threaten or weaken your mark's strength, regardless of confusion factors.

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