Protect Your Trademark from Infringement
As a business, your intellectual property is one of your most important assets and you must protect it. Protecting your intellectual property includes preventing others from using your trademark, or something similar, and depends on many factors, such as:
- Whether you can establish "active use" of your mark
- Whether consumers would be confused by the infringer's use of your mark or a similar mark
- Whether the infringer's use of your mark or a similar mark is diluting the power of your mark
- Whether the infringer is selling or offering similar goods or services
- Whether the infringer is using your mark or a similar mark in a similar geographic area
- Whether the infringer is using your mark or a similar mark in a similar market
Actively Using a Trademark
In order to protect your trademark, you must first put the mark into "use". Using a trademark is established by putting the mark to use in a marketplace to identify goods or services. You don't actually have to sell any trademarked goods or services, it's sufficient to legitimately offer products under your mark to the public.
For example, Sara creates a website for her catering business, UnbelievableCatering.com, and offers goods and services on her website under the trademark "Unbelievable Catering". Regardless of whether Sara ever makes a sell or has a single customer, her legitimate offering of catering services on her website available to public is sufficient to establish "use" of her trademark, thus she will be able to protect her trademark against infringement.
Using ® or TM
People sometimes get confused about the use of "R" in a circle or TM next to their trademark, but it's really simple.
- Use "R" in a circle if you have actually registered your trademark with the U.S. Patent and Trademark Office (USPTO).
- Use TM or SM next to your trademark if it is unregistered. Note that there is no legal requirement that you use TM or SM to claim ownership of your trademark, all you must do is simply "use" the mark. However, it's not a bad idea to use TM or SM because the use is so pervasive it helps lend credence to the argument that you claim ownership of the trademark.
Although there is no need to register your trademark with the USPTO, it's always safer to do so, and doesn't necessarily require hiring a lawyer. The USPTO maintains a website that allows you to register your own trademark at www.uspto.gov.
Reserving a Trademark for the Future
If you are in the planning or development stage of creating a product, you may have an idea for a product name that you'd like to trademark, but you don't expect to actually offer the product for awhile. The USPTO allows you to file an "intent to use" (ITU) trademark registration. Filing for an ITU doesn't itself establish register a trademark, it merely reserves the mark for future use.
Here's how it works. Once you've reserved your ITU trademark, you then must use the mark within six months to three years of filing the ITU. Once you actually use the mark in commerce, the "use" of that trademark back-dates to your ITU filing, so it really pays to file for an ITU if you are sure you want to use a certain trademark.
For example, if I registered for an ITU trademark today, and then used the mark 2 years later, my actual "use" of the trademark will back-date to today's date which can be very helpful for protecting the mark against infringers.
Preventing Others from Using Your Trademark
To prevent others from using your trademark, it is common to first send a "cease and desist" letter to the infringer. The letter demands that the infringer immediately stop using the mark you believe is infringing on your trademark.
If the infringer ignores your cease and desist letter and continues to use the mark, then the next step is to file a lawsuit. Trademarks are a federal subject matter, and accordingly trademark infringement cases will often be filed in federal court. Most states also have trademark laws, however, so for local disputes you may be able to file your lawsuit in state court as well.
Trademark Infringement Lawsuits
Most people who file a trademark infringement lawsuit have two goals in mind. First and foremost, you want to prevent the future use of the same or similar mark that you believe infringes on your trademark. This is fairly straightforward and sometimes is all you may want.
Second, you may be seeking damages for loss of business or other economic harm that resulted from the illegal use of your mark. If a court finds that the infringer intentionally misused your trademark, the infringer may have to pay his or her profits as damages for misuse of your mark. This is a much more complex case, but may be worth it if your business really has lost considerable sales to an infringing party.