How Do I Enforce My Trademark?

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• Who Has Priority to Trademark Rights?
• The Facts of Your Business and Use of a Mark
• Taking Action Against Trademark Infringement

If you’ve already registered your trademark with the U.S. Patent and Trademark Office (PTO), you’re well on the path to protecting your idea or brand. But there’s an important caveat: The PTO provides registration of trademarks, but not enforcement. It’s up to you, as the trademark owner, to both protect your interest and continue to use it (non-use for three years is considered abandonment). “What we say about patents is that it’s very complicated, but there’s usually an answer. What we say about trademarks is that it’s simple, but there’s no answer; it’s a matter of judgment. Is it descriptive? Well, who’s to say? Is it confusingly similar? And what does that mean?” says Rob Hassett, an intellectual property attorney at Hassett Law Group in Atlanta. “A lot of times there’s no way to know a real answer without going to court. It’s subjective.” That’s where IP attorneys come in. “Let’s say you’ve got your trademark, you’re already using it and you find out somebody else is using an identical or very similar mark—be it a business name, product name or service. The outcome will depend on your rights versus the other party,” says Linda A. Friedman, an IP litigator at Bradley Arant Boult Cummings in Birmingham. “You can’t immediately assume that they’re infringing.” Sometimes it’s easy to prove infringement—for example, in situations involving a long-established and famous brand fighting a knockoff, or a former employee creating a similar logo to their past employer’s. “But that is really the minority of these situations,” Friedman says. “It’s much more common for a company to learn that somebody else is using a similar trademark, and are unaware of how long they’ve been using it.”

Who Has Priority to Trademark Rights?

When Friedman sees a client about potential infringement, one of the first things she tries to determine is who has priority. You may think that goes to whomever registered it first, but that’s not necessarily the case. The U.S. gives common law protections to whomever who used the mark first, even if they never registered it with the PTO. Even more complicated: If someone filed a trademark application with the PTO and, before it was approved, another party starting using it, priority is awarded to the applicant. “So priority can become a bit complicated,” Friedman adds. “But, the earlier a company can apply for a trademark, the better protected they’ll be.”

The Facts of Your Business and Use of a Mark

Trademark law is all about circumstances, and attorneys in the IP field know how to traverse such waters. “It could happen that you get a federal registration and somebody has the right to continue using a trademark in their geographic area,” Friedman says. “There are a lot of facts that have to be compared and considered.” For example, let’s say a company operates primarily in the Southwest, and it isn’t nationally known. Another company from, say, New England, may be allowed to continue using the same product name. The courts will consider everything from the companies’ customers, channels of trade and distribution, types of products or services, and even their reputations. “If the products or businesses are totally distinct [except for a name], the burden is on the trademark owner to show that their brand is so well-known it’s entitled to protection—even when there’s no confusion in the marketplace. The argument is that the brand’s value can be diluted or eroded. Typically, the courts will require a pretty high degree of fame or being well-known to qualify for broad protection,” Friedman says, adding that the internet has complicated several of these factors. “It’s a lot of judgment calls. The court takes into account a whole array of factors. ‘Are they similar enough to lead to confusion?’ is one. There’s no bright line; you have to take each case by its own facts.”

Taking Action Against Trademark Infringement

This ambiguity, as well as cost in time and money, is why the vast majority of these cases are settled rather than litigated. “If you can resolve it without litigation, it’s almost always in your interest,” Friedman says. A lot of details can be ironed out during settlements, including a timetable of when one party will transition their mark, or the possibility of a license agreement. In the early stages of taking action, Friedman says she likes to draft a letter to the other company. “We advise them that we’re not aware of any likelihood of confusion today, but since we have the right to expand into their territory, it would be in their interest to consider changing now, before they develop a reputation,” she says. “You try to make it as polite and amenable as possible: firm and businesslike, but not accusatory—unless it seems intentional.” If a violation seems more egregious and demands immediate action, Friedman says the letter “lets them know that, if they continue to use it, it will be intentionally infringing, which subjects them to damages and attorney’s fees. You lay out the consequences, and offer to resolve the matter by an amicable settlement if they cease and desist without delay.” If you’d like more general information about this area of the law, see our trademark law overview.