Archives For September 2014

Protecting your trademark is an important matter and, in many cases protecting your trademark is equally or sometimes more important than protecting other business assets. And, if an individual or organization uses a mark in a manner that is likely to cause confusion with your trademark, then trademark infringement may have occurred.

So, what are your options if an individual or organization has illegally used your trademark?

Start with a letter expressing your concern.

For some, the first course of action is to send a cease and desist letter. This is a good tactic, but it immediately sets an aggressive tone from which it may be difficult to recover. If you start with a letter with an agreeable tone (perhaps even suggesting a trademark license), you may avoid a bumpy road ahead. As a genuine mistake may explain the actions of a party committing a trademark infringement, a simple letter may be all that you need.

Next, make a stronger case with a cease and desist letter.

One common remedy for trademark infringement is an injunction. A cease and desist letter notifies the infringer of the infringement, demands that they end their infringement, and threatens legal action to obtain an injunction and damages. This method is usually preferred over filing a lawsuit immediately because you will expend considerable money and other resources fighting a lawsuit. Hopefully this letter can help you avoid such costs and legal fees.

If still no success: file a lawsuit.

If neither of these remedies worked, you can file a lawsuit in a federal court (assuming you have a federal registration). If you are successful, the court is likely to enforce an injunction on the infringer to prevent them from using the trademark. Further, you can pursue the following damages: (1) any profits made from illegally using a trademark; (2) any financial damages you have suffered as a direct result; and (3) legal fees. The court will assess how much these damages are and whether or not you are entitled to them or other damages.

A trademark infringement can affect not only a company’s product, but also its brand. And while you can protect your mark even if it is not federally registered, your odds of success are greater if you have a registration.

Towards that end, you should call Mighty Marks® to protect your trademark. You can call us anytime at 855-MYT-MARKS.


Image: Thinkstock/adolf34

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

You’ve picked the perfect name for your new business; you even secured a reasonable domain name. And now you are ready to order business cards and start selling.

But have you thought about protecting your new name? If not, you should. And in this week’s post we will explain why.

Avoid Future Conflicts

The first reason is actually a bit reversed. You should go through the process of applying for a federal trademark so you can try to find prior users of the mark you want to use. A normal application process includes a search of the USPTO database and also a common law trademark search.

All too often new businesses fail to perform these searches and later learn of a prior user. Unfortunately, they often learn about that prior user through the receipt of a cease and desist letter. And when you receive such a letter, you will (at least in many cases) have to adopt a new brand at a great cost.

Stop Infringers

We have explained in the past that you don’t technically need a registration to claim trademark rights in a mark. However, if someone infringes your common law trademark rights, your cease and desist letter is a little less convincing and many infringers will ignore the demand.

The benefit of a registration is that you get a certificate from the USPTO that provides a legal presumption that you are the rightful owner of the mark. Once you have such a certificate, you can enclose a copy with your cease and desist letter to get infringers to end their infringement even faster!

National Protection

One of the biggest reasons to seek a federal trademark is national protection of your mark. When you rely on common law protection you can only claim rights in the geographic are in which you actually use the mark (plus a reasonable expansion area).

However, by obtaining a federal registration, you can stop new businesses from using your mark anywhere in the country. That is obviously a big benefit and with more and more businesses being transacted digitally all over the country, that benefit will come in handy.

Access to Federal Courts & Higher Damages

Lastly, without a federal trademark registration, you cannot file a lawsuit in federal court. If you wait until you find an infringer to file your application, waiting on the application will simply slow down your lawsuit and cause delays. And if you wait too long, the long-term damage of not being able to stop an infringer can be devastating.

Additionally, having a federal registration will give you power to seek larger damages and possibly even attorneys fees against an infringer.

How to Do It

Luckily, obtaining a federal registration doesn’t have to break the bank or be too complicated. You just have to find the right help. That’s where Mighty Marks® comes in. If you want help protecting your new business name, contact Mighty Marks® today!


Image: Thinkstock/Robert Churchill

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.