There are three distinct elements necessary to establish a trademark infringement claim; use, in commerce and likelihood of confusion.
Once you have determined that your trademark is likely being infringed, there are a few different enforcement options you can pursue. A cease and desist letter is typically the most cost-effective option, but in some cases a particularly egregious or blatant instance of trademark infringement can call for initiating a lawsuit.
In any scenario, the optimal first move is to try a cease and desist letter. Ultimately lawsuits are expensive and legal proceedings can take up significant amounts of time. Intellectual property attorneys can review the situation, prepare and send this cease and desist letter which is essentially a demand letter to the trademark infringer. This demand letter will clearly define and explain the trademark infringement.
In some cases, the infringer may not be aware of your pre-existing trademark. No matter the circumstances, the cease and desist letter indicates that they must stop using your mark within a specified amount of time or you will seek further legal recourse. If the infringer does not comply, this cease and desist letter now becomes evidence in your trademark infringement litigation.
If a cease and desist letter does not clear up the matter, then it may be time to litigate. There are four key things to consider when deciding on trademark infringement litigation:
To be successful in a trademark infringement lawsuit you need to be thoroughly acquainted with your business model and intellectual property rights. You will need to have proof of not only your registered trademark(s), but know important dates such as your first use in commerce of the trademark. Were you using your trademark before the alleged infringer? Has your trademark registration ever lapsed? Have you ever assigned – or been assigned – your trademark rights? How much do you spend on marketing related to your trademark? Have you experienced instances of confusion between your trademark and the mark of your potential infringer? These are all things you need to think about prior to initiating a trademark infringement lawsuit.
Trademark infringement lawsuits can cost on average anywhere between $120,000 to $750,000 depending on the complexity of the case. During the pendency of the lawsuit, you are responsible for paying your Attorney’s monthly bills. While recouping Attorneys’ Fees from the other side is possible, these fees are not awarded until the end of the case. Further, trademark litigation can take years to resolve, especially if the dispute is highly contentious.
By way of example, we represented WeatherUnderground in an cybersquatting case against a variety of typo-squatters. Through trial, the overall cost of litigation exceeded $500,000. The Defendants eventually settled just before picking a jury. Since liability was obvious, it was surprising the Defendants did not settle immediately. Litigation is always unpredictable. You never know what another parties true motivations will be until you are deep into the litigation.
Even if you win your trademark infringement lawsuit, the Defendant is not always capable of paying money damages awarded at the end. If the Defendant is insolvent, i.e. not collectible, you may have spent those expensive Attorney’s Fees referenced above for no reason. Before diving into trademark infringement litigation, ask yourself what you would be willing to settle for. A certain dollar figure? The infringer ceasing use of your trademark? Knowing your bottom line will help you throughout the litigation process if the prospect of settlement ever occurs.
To ensure the most effective representation and smoothest process possible, you will want to hire an Attorney who is experienced in trademark litigation. An experienced Attorney will be able to provide insight to the validity of your case and advise you of strategy every step of the way. If you are going to pursue trademark litigation, having a skilled Attorney on your side is worth the investment.
If you think that your trademark has been infringed and would like to discuss your options related to litigation or otherwise, contact a Traverse Legal Attorney today.