Archives For cease and desist letter

How to Stop Someone From Infringing Your Trademark

September 16, 2014 — Leave a comment

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.

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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.

In Trademark Disputes , ,
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Have Your Pi and Trademark it Too

June 10, 2014 — Leave a comment

A Brooklyn artist recently upset geeks and t-shirt merchants with a recently approved federal trademark registration on a 3,000-year-old Greek symbol.

In late 2012 Paul Ingrisano applied for a federal trademark registration for the Pi symbol followed by a period in connection to “athletic apparel, namely shirts, pants, jackets, footwear, hat and caps, [and] athletic uniforms.” After correcting some minor errors with the application he successfully obtained a registration for the mark in early 2014.

Within months of obtaining the registration, Ingrisano began enforcing his newly acquired rights. His first big target was Zazzle.com, a website where users can sell goods like shirts and mugs featuring designs created by the users.

In his cease and desist demand letter Ingrisano’s lawyer makes the case that the sale of apparel on Zazzle.com featuring the Pi symbol is likely to confuse consumers as to the source of the goods being sold (the essential element of proving trademark infringement). The letter then goes on to make multiple demands regarding inventory, evidence of sales, and various accountings.

Zazzle’s initial reaction was to remove all potentially infringing materials for fear it might be indirectly liable as the middleman between the creators of the potentially infringing goods and the end consumers. However after receiving complaints from the creators, a Zazzle representative told cnet.com “After reviewing the takedown request more closely, Zazzle has decided to restore the ‘Pi’ products. Zazzle is a marketplace for a community of artists, and we want to continue to support artists who are creating original artwork.”

Zazzle didn’t elaborate further, but several things in the cease and desist letter seemed a bit off. First, the letter requests Zazzle cease and desist all “copyright infringement” when the matter at hand is a trademark. Remember, copyrights tend to protect creative works while trademarks tend to protect names and slogans.

Second, it is unclear if Ingrisano is seeking to prevent others from using the Pi mark or the Pi mark plus a period. The essential question is whether consumers purchasing goods on Zazzle would be confused as to the source of the goods and believe they were coming from Ingrisano when, in fact, they were not. That raises the question as to the importance of the period in the Pi registration – a question that would likely have to be decided by a jury.

This registration and Ingrisano’s attempt to protect the Pi symbol with a period will undoubtedly raise many eyebrows in the coming months and years and we’ll let you know when new developments arise.

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Image Credit: uspto.gov

*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.

 

 

In Trademark Disputes, Trademark News , , , ,
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Justice Explained: Trademark Infringement & Defenses

April 24, 2014 — 4 Comments

Business owners should understand what constitutes trademark infringement before they encounter it, regardless if they are the enforcer or alleged infringer. You should also understand common defenses from both sides as well. In this post we will cover the basic elements of an infringement claim and common defenses that might hold up.

Trademark Infringement – Likelihood of Confusion

The most common infringement claim is likelihood of confusion. An infringer commits trademark infringement if they use another party’s trademark to sell goods or provide a service if their use is likely to cause consumer confusion as to the source of the goods or services.

Let’s revisit Evan’s Coffee House, an example we discussed earlier this week. Assuming Evan holds a federal registration for “Evan’s” in connection to the sale of coffee, he will be able to use that registration to prevent others from opening an “Evan’s Coffee House;” but that’s not all.

Evan can likely prevent someone from using “Evan’s” in connection to an eat-in-bakery if the services provided are similar and he may even be able to prevent someone from selling “Evan’s” coffee grounds in a grocery store. Additionally, Evan can prevent alternate spellings such as Even’s, Evan, Even, Evens, and maybe even Heavens coffee from being used to sell coffee if he can show that consumers are likely to be confused as to the source of the goods.

Notice that actual confusion is not required. All that is required is a likelihood of confusion to prove trademark infringement.

So, what happens when Evan sends a cease and desist letter to Evens Coffee House? Several things can happen, most likely of which is the alleged infringer will claim there is no likelihood of confusion or he might raise some other defense.

Trademark Defenses

Alleged infringers will often raise the issue of confusion and claim there is no confusion or likely confusion. When that happens the parties will usually negotiate their various positions and hopefully avoid litigation. Of course, some alleged infringers have affirmative defenses they can raise, specifically descriptive use and nominative use. When these affirmative defenses exist, an alleged infringer might be allowed to use the mark, even without permission.

Descriptive fair use occurs when the alleged infringer uses a trademark in a way that is solely for descriptive purposes and is unlikely to cause consumer confusion. In the case of Evan’s Coffee Shop, another Evan could open up a coffee shop and include in it’s marketing materials the fact that Even Doe is the owner and manager of the shop, provided the materials don’t create the impression that the new shop is related to Evan’s Coffee Shop.

Nominative fair use occurs when the alleged infringer uses a mark and there is no other way to refer to the good or service. For example, a car repair shop may say they repair BMWs, provided they don’t use the mark in a way to indicate they are an official BMW repair shop. This is because there is no other efficient way to alert consumers that they repair BMWs.

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Image Credit: Thinkstock/Willard

*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.

In Trademark Law , ,
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