Posted in Intellectual Property
Your company’s most valuable assets could be its intellectual property. Just like you lock the doors when you close to protect what’s inside your office, store or factory, there are ways to protect your intellectual property. A trademark can include any word, name, symbol, device or any combination, used or intended to be used to identify and distinguish your goods or services from others and to show the source of those goods and services.
The first step to protecting this property is to register it with the US Patent and Trademark Office (USPTO). If you had to litigate to protect your rights, you could argue that “common law” created by judicial decisions over time protect your rights to a name, but the chances of success would be far greater is you are actively using the mark in commerce and have filed for federal trademark protection with the USPTO. You also need to take this step to challenge a website domain name registries to protest someone else’s domain name.
Federal registration of a mark is not mandatory but it has several advantages, including,
- Notice to the public of the registrant’s claim of ownership of the mark,
- Legal presumption of ownership nationwide, and
- Exclusive right to use the mark on or in connection with the goods/services listed in the registration.
Once you’ve done that and you think your trademark rights have been infringed, there are some considerations you need to think about before legal action would be warranted.
- Is there trademark infringement?
Could consumers be confused by the dual use of the trademark? Is the mark used on competing goods and services? If you trademark Acme Real Estate Development, would a potential customer confuse your business with Acme Fried Chicken & Biscuits? If not, there’s no infringement.
Where is the other company located?
- If you’re doing business only in Orange County a similarly named business in Seattle wouldn’t infringe on your rights because your customers probably won’t confuse your business with the one in Washington state.
- This may be an issue if your business grows to the point where you are in Seattle or if you’re heavily engaged in e-commerce where geography is irrelevant, a court could look at how someone’s online presence can impact your business.
How closely spelled or worded is your trademark with what the other business is using? Names can infringe on one another even if they aren’t identical. Akme Real Estate Co. may be close enough to think about taking some action.
- Take appropriate action.
We can start by sending a cease-and-desist letter to the infringing business and demanding that they stop using your mark. If that doesn’t change the behavior, legal action can be filed in state court, or if the issue crosses state boundaries, in federal court. Remedies can include ceasing use of the mark and money damages (such as any money the infringer made as a result of the infringement as well as any damages that your business may have suffered as a result of the infringement).
You worked hard to get your business where it is today. If your trademarks have been infringed, someone else may be trying to benefit from your work. If you want to learn more about trademarks you can watch a series of USPTO videos and if you feel another company if infringing on your trademark rights, or you have been accused of trademark infringement, call my office so we can talk about your options.
