You worked hard to brainstorm and design a name and logo to establish your branding, so how can you prevent other companies from using it?
Well it can be a bit tricky. Trademark law can confuse even the savviest business owners. The United States Patent and Trademark Office (USPTO) has provided a number of tutorials, FAQs and guides to help deal with trademark infringement but it can still be difficult to maneuver.
Here are a few steps to try and make the process a little bit less painful. (While I do provide tips on dealing with trademark infringement, I recommend talking to a trademark attorney when this issue arises)
But with the steps below, I hope to take the mystery (and pain) out of p Many items we use every day, like aspirin, zippers and escalators, are or were trademarked brand names.
Step 1: Determine if there is actually trademark infringement.
Before diving into a lawsuit, you need to determine if a problem truly exists. To do so, let’s review a few trademark facts -- and these are many of the points a trademark attorney will discuss right off the bat.
First, trademark infringement occurs only when consumers will be confused by the dual use of the trademark and whether the mark is being used on competing goods and services. That’s why Delta Airlines and Delta faucets are both in use -- when you are redesigning your bathroom you aren’t likely to purchase an airline ticket by mistake. If another company is using your trademark, ask yourself if a customer is likely to confuse that business with your own.
The next factor to consider is location. If you operate a flower shop in Charleston, S.C. and someone opens a similarly named flower shop in Missoula, Mont., this likely isn’t considered infringement because customers in South Carolina probably won’t mix up their local store with one in Montana.
Granted, if your business becomes famous across the country, you may have a greater chance of claiming infringement regardless of location. Likewise, ecommerce is shrinking geographic barriers and courts may consider how someone’s online presence can impact another’s business (more on domain names later).
Another often-confused aspect of trademark law is that names can infringe on one another even if they aren’t identical. Courts often consider “sight, sound and meaning” when determining if two marks are similar. So adding an "s" to make a name plural isn’t enough to distinguish it. Or try to name your fast food restaurant “McDowell’s,” and you’ll quickly see that marks don’t need to be identical to cause infringement.
Step 2: Take action.
If you believe that the other name is a) being used on competing goods and services b) customers would likely be confused by the two names and c) the other name is being used in your same geographic region, then you should take action.
The first step is to contact an attorney specializing in trademark law. He or she will help you through the next steps:
- Trademark issues typically begin by sending a cease-and-desist letter to the infringing business and demanding that they stop using your mark. Here’s a sample letter, but since every case is unique, you should have an experienced attorney review your letter and case before sending.
- If the alleged infringer continues to use your trademark after receiving your letter, the next course of action is filing a lawsuit in federal court if the use spans more than one state or in your state court if it’s a purely local matter. Possible remedies include preventing further use of the mark in addition to money damages. You can ask the court to have the infringer pay you any money they made as a result of the infringement as well as any damages that your business may have suffered as a result of the infringement.
- If you are a trademark holder and you want to challenge someone’s domain name (i.e. someone else registered a domain name that is very similar to your trademarked name), you can file a trademark infringement lawsuit. For egregious cases of cybersquatting, you can opt to file an expedited complaint with one of ICANN’s approved dispute resolution providers. If you’re not familiar with them, ICANN is international organization in charge of domain name registrations.
The most important step: File a trademark in the first place.
In state and federal courts, you can try arguing based on your “common law” rights to a name, but you will be far more successful if you are actively using the mark in commerce and have filed for federal trademark protection with the USPTO. In fact, domain name registries will require you to have a federal trademark to protest someone else’s domain name.
This is why the most important step in trademark protection is applying for your trademark as soon as possible. Too often, small-business owners don’t think about trademarks until it is too late, and they see someone else using their company or product name. At that point, it becomes a fight over who owns the name and who was using it first. Therefore, put yourself in the best possible position by applying for your trademark early on.