Your brand is WHO you are, WHAT you do, and WHY you do it. It’s how consumers will first encounter your business. It’s the common thread throughout your marketing. Your website, business cards, and invoices all reflect it. That’s why brands are important.
Trademarks (name + logo + slogan) represent brands. Federal trademarks protect brands. If you discover that another company is infringing your trademark, you can and should take action to enforce your rights.
How should you handle trademark infringement?
1. Learn What You Can About Them
The first thing to do is to learn about them. Visit their website and social media pages. Grab screenshots. Take pictures of their products or advertisements.
You’ll want to find out:
- What they sell
- Where they sell it
- When they first used the brand
- Whether they have a Federal trademark
2. Keep it Off Social Media
You don’t want to post about it on social media. It can get you into legal trouble and won’t help.
We’ve seen defamation lawsuits that started when one company posted an Instagram story about another company stealing their brand. Handle it offline – away from your customers.
Trademark infringement is a complicated Federal legal matter. We can help.
3. Ask Yourself: Are They Too Close?
You’ll need to weigh whether they are using a trademark that is legally too close to yours. This test can get complex. Still, they’re probably too similar if they meet these three conditions.
You’ll want to be broad about what sounds and looks similar. For example, if the brands share a keyword, they may be too similar. Words like “Inc.” “The” or “And” won’t make a difference. You can ignore them.
You’ll also want to consider what the brands mean. If the brands allude to related feelings or even geographic locations, they may be too similar. The use of another language won’t make a difference. In the US, hello and “hola,” for example, are treated as the same.
You’ll want to be broad about what is a similar product or service. They don’t need to be the same. Even complementary products and services can be “similar” for trademark infringement.
For example, shirts and bags could be too similar because many stores sell both.
If their products and services can be sold in the same way that you sell yours, then they need to stay further away from your trademarks.
4. Know Your Trademark Rights
A (Federal) trademark gives you the exclusive right to use your name + logo + slogan. This exclusive right extends to all 50 States.
This exclusive right extends to all trademarks that are “confusingly similar.” If (1) you have a Federal trademark, (2) the new brand is similar to (or the same as) your trademark, and (3) they started their business after you, then you can take steps to stop them. Keep reading to see what to do next.
If you don’t have a Federal trademark, you can’t stop them yet. You may still be able to trademark the brand and stop these copycats. Consider talking with an experienced trademark lawyer.
5. Get Legal Help to Handle Trademark Infringement
If you decide that someone is using a trademark that is too close to yours, contact a trademark lawyer to help you work through your many options.
Most trademark-infringement enforcement strategies start with sending a cease and desist letter addressed to the trademark infringer demanding that they stop infringement. Many times, however, other options are preferable. These include applying for a Federal trademark, sending a reservation of rights letter, or continued monitoring.
In the US, you are responsible for enforcing/protecting your trademark property rights. You can lose your trademark rights if you do not enforce them.
Trademark enforcement is not a DIY project. It involves Federal Statutes, legal analyses, and strategy. Also, you may inadvertently say something that can be used against you.
For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.
Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).