Most people are familiar with trademarks, but are unaware of what happens when they use someone else’s trademark.
The unauthorized use of another’s trademark is called trademark infringement and it is more likely to occur than you would think.
So how do you know you are infringing on someone else’s trademark?
Generally, the owner of the trademark will send you a letter stating that you are potentially infringing on their trademark and demand that you stop using the accused mark. You might also be served with a lawsuit for the infringement.
In order to support the trademark infringement claim, the trademark owner must prove that he/she owns a valid mark, he/she has priority rights over you to the mark, and your mark is likely to cause confusion in the minds of consumers about the source of the goods and/or services associated with the two marks.
How does a court decide if there is a likelihood of confusion between the two marks? Generally, the court will consider evidence addressing various factors. Two of the key factors considered include the degree of similarity between the marks, and whether the goods and/or services associated with the marks are sufficiently related as to cause confusion in the minds of consumers. Some other factors that may be considered are how and where the goods and/or services are advertised, marketed, and sold, and any evidence of actual confusion caused by the allegedly infringing mark.
Here are some ways that you can respond if you receive a letter from a trademark owner alleging your potential trademark infringement:
- You can respond and deny infringement or ask for more specific evidence in regards to the potential infringement.
- You can do nothing if you believe you are not actually infringing and the letter was sent to intimidate you into not using your mark.
- You can negotiate with the trademark owner for a license to use the mark or obtain an agreement that you are not infringing.
- You can file your own lawsuit denying infringement.
Moreover, one of the first things you can do before you decide to use a mark or if you receive a letter accusing you of infringement is to use the United States Patent and Trademark Offices’ Trademark Electronic Search System (TESS) to search the database of applications and registrations.
At Lardiere McNair, LLC our attorneys always have our clients’ best interest in mind. So, if you have received a letter about your potential trademark infringement or believe someone is infringing on your trademark give us a call and we will work with you to find the best resolution.
More information about trademarks and trademark infringement can be found on the United States Patent and Trademark Office website at https://www.uspto.gov/trademark/been-sued-or-received-cease-and-desist-letter-answers-common-questions-about-trademark.
Alexandria Nagel is a Law Clerk at Lardiere McNair, LLC. To read more about our firm, please visit www.lmcounsel.com.
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