Prevent Trademark Infringement of Your Brand

How Do I Pursue a Brand Infringer?

Trademark law is set to allow you protection for your brand name, logos, and other signifiers. There is no requirement to register your mark with the USPTO but doing so has its advantages. One of which is providing notice to the public of your ownership, as well as allotting the exclusive right to use the mark in connection with the goods and/or services under your brand name.



When you own a trademark, you are able to stop others from using your mark or any mark that looks similar. If it is discovered that another person is infringing on your mark, what are your next steps? 

Sending a Cease-and-Desist Letter to stop Infringing a Brand

When it is discovered that someone is using you mark, filing a lawsuit is not the best first choice. Lawsuits are expensive and extremely time consuming. A more efficient first route would be to send a cease-and-desist letter. This is essentially a demand letter addressing that the infringer immediately stop the use of your mark.

Sometimes, an infringer might not even have a sense that they were infringing upon your pre-existing mark. It is also possible that they do know about your mark, but simply were trying to ride off your goodwill with your consumers. Whatever the case may be, a cease-and-desist letter would outline the actions required for them to stop infringement as quickly as possible.



After you have sent a cease-and-desist letter, if the infringing actions are not halted, you are able to use it as evidence proving that you tried to negotiate with the infringer in good faith before proceeding with litigation.

Filing a Brand Infringement Lawsuit

If your attempt at sending a cease-and-desist letter is ignored, you might have no choice but to proceed with a lawsuit. Furthermore, there are a few things that you should take into consideration before litigation.

Does the Brand Infringement Cause a Likelihood of Confusion?

Trademark law was designed to protect consumers even though most businesses benefit from the registered mark. The courts take into consideration the likelihood of confusion between your mark and the infringing mark before other things. In other words, they want to know if the average consumer within the relevant market would be confused by which product belongs to which source. Additional considerations are:



• Whether the trademark is being used on competing goods or services
• Whether consumers would likely be confused by the dual use of the trademark; and
• Whether the trademark is being used in the same geographical area or is being used on related goods
  

Causing Harm to Your Mark and Brand

Aside from claiming that there is likelihood of confusion with an infringing mark, one can also claim that the other mark is “tarnishing” or “diluting” their mark, which causes harm. Federal laws, also known as dilution statutes, allow one to claim their mark is famous and that the use of the other company’s mark would negatively impact your mark’s strength.

In other words, dilution of your brand comes when the other brand weakens your mark’s reputation or renders it through overuse in different context. It’s crucial that your brand is distinctive and recognizable. However, dilution statutes apply even if customers can’t confuse the sources of goods or services with those sold by the owner of the “famous” mark. For example, a customer probably won’t think the Apple toilet paper company is associated with the Apple software company, but Apple toilet paper could still be forced to choose another name due to federal dilution laws as Apple is a famous brand.

Actively Using a Trademarked Brand

An important factor to keep in mind is that you must be actually using your mark in order to consider taking a trademark litigation case to court. A business is not able to claim infringement if the mark is not being actively used. According to trademark law, “using” a trademark means putting it to work in the marketplace to identify goods or services.

Furthermore, as long as a product is offered to the public under the trademark in question, it does not mean that the product has to be sold. Keep in mind that trademarks are in place to help the consumer rather than the owner of the trademark. An unused trademark will receive minimal protection from the courts.