Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.
This is Brian Hall, a trademark attorney with Traverse Legal, PLC, a law firm that represents trademark owners throughout the United States and throughout the world. Today, I will be answering the question, “How to stop trademark infringement?” And before I answer that question, let’s talk about what trademark infringement is.
Trademark infringement occurs when someone makes use of your trademark without your permission, and by doing so, it creates what’s known as a likelihood of confusion with your particular mark and the source of your goods or services. And a court analyzes what constitutes a likelihood of confusion by looking at a whole list of factors. The two most important being the similarity of the marks themselves, so you compare your mark versus what they’re using, and also the similarity of the goods or services associated with that mark. So, you look at how your mark is used for a particular good or service, and then you look at how the infringing mark is used in connection with a particular good or service. And, if indeed, it appears that trademark infringement is likely, you then need to determine how you can address that trademark infringement in hopes of stopping it.
And this is where I recommend you contact a trademark attorney. I say that not only because I am, indeed, a trademark lawyer myself, but also because I have seen trademark owners who have jeopardized their position by trying to resolve these issues on their own. So, once you’ve contacted a trademark attorney, they will likely review the options that you have to stop trademark infringement.
The first being whether you should send what’s known as a cease and desist letter, also known as a threat letter. And typically, these letters range from either simply putting the user of the infringing mark on notice of your trademark rights and asking that they stop making use of the infringing mark, and other times, the letter might be more detailed. It might go into what the law is, show them that they would, indeed, lose and you would, indeed, be entitled to a compensation or other jury verdict if it proceeded to that stage, and ultimately lists out what demands you make, which could be, among other things, that the cease and desist use of the mark, that they give you an idea of how many goods they have sold, give you an accounting of their profits, and maybe some other requirements such as stopping use, not only in connection with the goods or services, but also in domain names, in keywords such as Google Adwords and related items.
If the cease and desist letter does not work, then the next avenue is really a court of law. And a trademark infringement lawsuit can be filed in federal court, and it is best if you’re basing it upon a federal trademark registration, but even if you are not, you can still file in federal court under the Lanham Act based upon your common law trademark rights. Regardless, a trademark attorney will be in a position to advise you as to your likelihood of success based upon the strength of your mark and the extent of the infringing use.
So, if you identify someone making an infringing use or unauthorized use of your mark online, in connection with a product or advertising for services, you’d be well served speaking with a trademark attorney.
This has been Brian Hall answering your question: “How to stop trademark infringement?”
You’ve been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.