Trademark Enforcement

It is important to understand the enforcement options and remedies that are available for trademark infringement - it can help a trademark owner determine the best course of action to take in enforcing their rights and protecting their brand identity.  Knowing the available enforcement options and remedies can also help a trademark owner evaluate the potential risks and benefits of taking legal action against an alleged infringer, including the costs associated with litigation and the likelihood of success. 

Trademark infringement is the unauthorized use of a trademark on or in connection with goods or services in a manner that is likely to cause confusion, deception, or mistake as to the source of the goods or services.

What is a cease and desist letter? 

If you believe someone is infringing your trademark, the first step is typically to send a cease and desist letter. A cease and desist letter essentially informs the infringer of their infringing conduct and demands that they comply and stop that conduct. 

For example, if your company has a trademark "A Bee Sea Widgets" for your brand of electronic products and you discover that another company is using a similar name "A Bee Sea Dee Widgets" to also sell electronics in the same market, this could lead to customer confusion and dilution of your A Bee Sea Widgets’ brand identity. In this case, you may choose to send a cease and desist letter to the other company demanding that they immediately stop using the similar name. 

The cease and desist letter is a legal notice and may typically include information about the trademark owner's rights, evidence of the alleged infringement, and a demand that the alleged infringer immediately stop using the trademark and take corrective actions, such as removing any infringing materials from their website or destroying any infringing products.  An attorney typically helps draft a cease and desist letter due to the potentially complex legal issues involved.

The purpose of a cease and desist letter is to give the alleged infringer notice of the trademark owner's claims and to provide an opportunity to resolve the dispute without the need for potentially costly litigation. If the alleged infringer fails to comply with the demand, the trademark owner may choose to pursue legal action to enforce their rights and seek damages.

What happens if a cease and desist letter does not work? 

If a cease and desist letter does not work to end the alleged infringer’s conduct, then a trademark owner may choose to pursue legal action to enforce their rights, such as filing a lawsuit against the infringer in either state or federal court. 

For example, if the company associated with "A Bee Sea Dee Widgets" believes that they have a legitimate right to use that trademark because they believe their product, a different type of electronics, is sufficiently different from A Bee Sea Widgets’ electronics, they may choose to continue using the trademark despite receiving a cease and desist letter.  They may respond to A Bee Sea Widgets’ cease and desist letter, providing reasons why they will not comply.  In some cases, an accused infringing party may simply ignore the cease and desist letter and continue with their conduct, possibly because they believe the trademark owner is unlikely to take legal action or they are willing to risk the consequences.

Enforcing a trademark owner’s rights may then involve filing a lawsuit against the infringer to seek a court order, known as an injunction, to stop the infringing conduct.  In addition to seeking an injunction, the trademark owner may also be able to recover monetary damages for any harm that the infringement caused. These damages can include lost profits, damage to reputation, and other losses that resulted from the infringing conduct.

It is important to note that pursuing legal action can be time-consuming and costly, and there is no guarantee of success.

How can having a federally registered trademark help?

Federally registering a trademark provides the right to bring a lawsuit concerning the trademark in federal court. Federal registration also typically provides a presumption that the owner owns the mark and all rights to use it, nationwide. This eliminates the need in federal court to provide copious evidence. Accordingly, most federally registered trademark owners choose to sue for trademark infringement in federal court. 

The presumption of ownership and validity of a trademark created by federal registration can make it easier for a trademark owner to enforce their rights in court by shifting the burden of proof onto the defendant. When a trademark is federally registered, there is usually a legal presumption that the owner is the rightful owner of the trademark and that the trademark is valid. This means that if an infringement dispute arises and the trademark owner brings a lawsuit against an alleged infringer, the burden is on the alleged infringer to prove that the trademark owner is not the rightful owner, demonstrate that their use of the similar mark is not infringing, or that the trademark is invalid.

This presumption of ownership and validity can be a significant advantage for the trademark owner in litigation, as it can make it more difficult for the alleged infringer to successfully argue that they have a right to use the trademark or that the trademark is invalid. 

In addition, the presumption of ownership and validity can also make it easier for the trademark owner to obtain injunctive relief, which is a court order that requires the alleged infringer to stop using the trademark. This is because courts may be more likely to grant injunctive relief since there is a strong presumption that the trademark owner is the rightful owner of the trademark. 

Overall, the presumption of ownership and validity created by federal registration can be a powerful tool for trademark owners in enforcing their rights and protecting their brand identity.

Are there rights if a trademark is not federally registered? 

If you don’t federally register your trademark, it may be protected under common law by using it in commerce in a particular geographic area. However, this limits your rights as you can generally only enforce your trademark rights in the specific geographic area where it is being used. Read more about common law trademark protection here. 

You may also be able to register your trademark within the state in which you do business. However, not all states offer trademark registration, and such state registration creates trademark rights within the registered state only. If you desire to expand your business across state lines, for instance, then federal registration may be the more desirable option. 

Conclusion

Having a federally registered trademark is important for trademark enforcement because it provides a legal presumption of ownership and validity of the trademark, making it easier for a trademark owner to enforce their rights.  However, determining an enforcement strategy for trademark infringement can still be challenging.  Please feel free to reach out if you have any questions regarding your trademark rights. 

Take the Next Step to Protect Your Trademark

Whether you have a registered trademark and want to pursue infringement action, or are deciding whether or not to file for trademark protection, the BCR Firm would be happy to help and discuss your options. 

Please do not hesitate to reach out here.