by Attorney Richard Stim

When and how to stop others from infringing on or diluting your trademark.

As the owner of a trademark, when you can stop others from using your trademark, or a confusingly similar one, depends on such factors as:

• whether the trademark is being used on competing goods or services (goods or services compete if the sale of one is likely to affect the sale of the other)
• whether consumers would likely be confused by the dual use of the trademark, and
• whether the trademark is being used in the same part of the country or is being used on related goods (goods that will likely be noticed by the same customers, even if they don't compete with each other).

In addition, under federal and state laws known as antidilution statutes, you may go to court to prevent your trademark from being used by someone else if the mark is famous and the other company's use would dilute the mark's strength -- that is, weaken its reputation for quality (called tarnishment) or render it common through overuse in different contexts (called weakening).

Antidilution statutes can apply even if there is no way customers would be likely to confuse the source of the goods or services with those sold by the owner of the famous mark. For instance, consumers would not think that Microsoft Bakery is associated with Microsoft, the software company, but Microsoft Bakery could still be forced to choose another name under federal and state anti-dilution laws.

However, a business that claims to own a trademark cannot stop others from using the same or a similar trademark unless it is actively using the trademark.

Using a Trademark Actively

In trademark law, "using" a trademark means putting it to work in the marketplace to identify goods or services. This doesn't mean that the product or service actually has to be sold, as long as it is legitimately offered to the public under the trademark in question.

For example, Robert creates a website where he offers his new invention -- a humane mousetrap -- for sale under the trademark "MiceFree." Even if Robert doesn't sell any traps, he is still "using" the trademark as long as "MiceFree" appears on the traps or on tags attached to them and the traps are ready to be shipped when a sale is made.

Similarly, if Kristin, a probate attorney, puts up a website to offer her services under the service mark Probate Queen, her service mark will be in use as long as she is ready to respond to customer requests for her advice.