In our previous article, “Enforcing Trademarks, Part One,” we looked into enforcing a trademark. Additionally, we outlined proactive steps to take to put others on notice that someone owns a specific trademark. In this article, we continue our discussion about enforcing a trademark.
What Happens If Someone Is Using A Trademark Illegally Or Without Permission?
An owner can raise two types of claims if someone uses a trademark without the owner’s permission. Those claims are infringement and dilution. More often than not, people raise both claims together to enforce the protection of the trademark.
If someone is illegally using a trademark, the trademark owner will need to send a cease and desist letter. It is best to use an attorney with trademark law experience to do so. Cease and desist letters can effectively inform the violator of the ownership rights of a trademark and possible civil liability that may result if the violator refuses to stop.
If the cease and desist does not work and the person continues their infringement, the only alternative would be to bring a case in court. If the person infringing on your trademark is local, you can file a lawsuit in state court. For example, a company located in the State of Florida and only does business in Florida has its trademark infringed by someone in Florida. Then the state court would be the proper venue to bring a case.
On the other hand, if the person infringing on the trademark is out of the state or in another country, then the best venue would be the United States Federal Court. As long as you properly register the trademark with the United States Patent and Trademark Office (USPTO), then you will have a presumption of ownership rights on the trademark.
What Does The Trademark Owner Have To Show In Court?
For a trademark case to be successful in court, the trademark owner will have to show ownership of the trademark. USPTO registration fulfills that requirement. If you do not register the trademark, you have to show constant use through product placement, domain ownership, and social media use.
Will Proving Ownership Be Enough?
Proving ownership may be enough to get a court injunction to stop the offending party from using the trademark. Suppose the trademark owner wants to seek damages as well. In that case, they need to be able to prove that the offending party’s use of the trademark caused them to earn a profit at a loss to the trademark owner, and therefore the trademark owner deserves compensation.
How Does One Defend An Improper Trademark Use Case?
Someone who is being sued for the improper use of another owner’s trademark may be able to defend the use of the trademark by attacking the valid claim to ownership. This is easier to do when the trademark has not been previously registered with the USPTO. This is also the case if the defendant can show that the trademark has been used generically.
An example is the name “Google”. Google has become synonymous with a verb indicating to research something and a noun depicting the search engine. As a result, if Google was not registered with the USPTO, then a person might be able to argue that the name “google” has become a generic term that can be applied to other things such as “Google Sportdrink,” which could not be confused with the search engine.
Lastly, a defense can be made that the non-approved use of a trademark was used under First Amendment rights.
Contact Dowd Law
If you need assistance in protecting your trademark, contact Dowd Law for a consultation. We will outline the proactive steps that you can take to ensure full use and enjoyment of your trademark.