Someone Says You Have Infringed On Their Trademark. Now What?
When an individual or business is accused of trademark infringement, they are being charged with breaking the law. This may be a civil action in either a federal or state court. Trademark infringement cases are usually heard in a federal court, and it is critical the individual involved takes the correct steps.
Understanding the Trademark
A trademark is the brand a business uses to tell customers about their business. The trademark is created when the business is being branded and eliminates confusion within the marketplace. A trademark is protected under the laws of the United States. The best protection is obtained with a registration at the federal level. This is accomplished through the USPTO or the United States Patent and Trademark Office. A trademark can also be registered at the state level, but the protection is not as effective.
The Documentation
Everything pertaining to the infringement accusation must be documented. Trademark infringement can be determined with some simple tests, and this is when most businesses retain a trademark attorney. An attorney knows exactly what information must be documented and how to gather any missing information. This includes everything from letters or emails received regarding the accusation to pertinent phone calls to the specific details of the trademark. This information is critical for the accused. If the business receives a cease and desist letter, it is highly recommended they retain an attorney immediately. The company may be informed of the consequences if they do not immediately stop using the trademark, litigation may be threatened, and payment for damages may be demanded.
The Digital Millennium Copyright Act
The business may receive a trademark infringement notice from a website hosting platform. The Digital Millennium Copyright Act offers a process to enable the company to remove any items violating the copyrights. This is referred to as a DMCA takedown notice. There are websites capable of reporting a trademark infringement as a copyright infringement. The business will usually receive a cease and desist letter prior to the company filing a trademark infringement lawsuit.
The Infringement Accusation
The business must determine if they have infringed on a trademarkand if the registration is at the federal or state level or of it is an unregistered trademark. The date the trademark was first used by the accuser must be established. If the accuser began using the trademark after the business, it will be difficult if not impossible to prove trademark infringement. The purpose of a trademark is to prevent confusion. Confusion within the marketplace must be shown to determine trademark infringement. Different factors are considered by the courts including if the businesses are selling different products or services and if consumers will be confused if the trademark is used by both companies. An attorney has knowledge regarding all factors considered by the courts.
The Reaction of the Business
How the business chooses to proceed must be considered, and there may be legal consequences. Removing any contested items is a consideration, but this may imply the business is at fault. The business can request information including registration details, first date of use and geographic locations. This must be done through a letter or email and not on the phone for documentation purposes. The business can negotiate or try to obtain a license from the accuser to use the trademark. If the company does not believe the accusation has merit, they can contest and challenge the rights of the accuser to the trademark.
A pending federal registration can be opposed, the case can be taken to court, and a petition can be filed to cancel the registration of the trademark. The business can also choose not to act because sometimes a cease and desist letter is nothing more than an attempt to intimidate and scare the owner of the business. The accuser may not have a strong case for their claims on the trademark. The business may also be bluffing, but care must be taken. If the business is found to be infringing, they can be punished for their actions by the law.
The Final Solution
No single solution for trademark infringement is applicable for every case. One of the best possible solutions is to consult with an attorney to determine if the accusation has merit. Once the attorney has reviewed the documentation regarding the case, they will most likely know if the business has violated a trademark. At this point, the attorney will give the business their recommendations regarding the case. The business must then decide which course of action they choose to take.
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