How should you deal with trademark infringement?

You have come up with a name for your new company or product, you have registered your trademark and then you discover that someone else is using the same name as you. What should you do?

Firstly, it really depends on who registered the trademark first and the size of the opposing company. If you registered the trademark first, then you would have authority over the other company. However if the opposing company is a major corporation then it may not be worth your while trying to fight back.

If you decide to take action against the infringing company it is always recommended to gain some legal advice and to have a trademark attorney present when you approach them.

So how do you determine whether your trademark is being infringed upon?

The USPTO definition of trademark infringement is “the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services”. Therefore if you find that another company is using the same brand as you and that their brand could easily be confused with yours then either they or you may be  guilty of trademark infringement.

However, trademark infringement can also occur if another company has a brand that is only similar to yours and not identical i.e it sounds or looks similar, it has a slightly different spelling or it has a similar meaning. This was the case for Victoria’s secret when Victor’s Secret, a boutique lingerie brand, came on the scene, unknowingly infringing upon the former’s trademark.

Location is another important factor that must be considered when determining trademark infringement. If the brand that you suspect of infringement has their trademark registered in the US for example, when your brand is registered in the UK, then there is no infringement since there is no overlap of territory. However, if you have a European trademark and another company is using the same name for the same goods and services that you are providing anywhere in the EU then this would be considered trademark infringement. If they then tried to register the trademark in their own country, it would either be rejected by the local authority or you would have the option to oppose their application.

Lastly has anyone actually confused the two brands? It was customer confusion over brand ownership that led to the Budweiser trademark dispute which has been going on since 1907 between the American and the Czech beer brewing companies. If consumers can distinguish between the two brands and there is no evidence of customer confusion then the likelihood of there being a case of trademark infringement is next to none.  

What action can you take to enforce your trademark rights?

A trademark lawyer may advise you to issue a cease-and-desist letter to the company that has been infringing on your trademark. If however, the company does not respond to this request, you may be advised to take further legal action by filing a trademark infringement lawsuit.

In some cases an agreement can be reached whereby the infringing party agrees to only use the trademark for a specific set of goods, which will then be recorded on their trademark application.

For advice and more information on searching, acquiring, registering and enforcing Trademarks please visit our website, http://www.lipex.com.

Our unique database of trademarks for sale or license could save you time and help protect your brand.