Enforcing and Litigating Trademarks
Your trademark rights won’t do you much good if you fail to enforce them. In fact, failure to enforce your trademark rights can even cause you to lose them!
Trademark infringement occurs when someone else:
- Uses your trademark without authorization,
- On or in connection with goods and/or services, and
- In a manner likely to cause confusion, deception, or mistake about the source of the good and/or services.
It’s important to note that merely mentioning your trademark isn’t infringement. For example, someone could mention your mark in order to praise, critique, or make fun of your product without infringing your mark.
Cease and Desist
Often, the first step in enforcing a trademark is sending a “cease-and-desist” letter. (Yes, “cease-and desist” is typical legal redundancy.)
A cease-and-desist letter puts the recipient on notice that you claim that their use of your mark is infringing and tells them to cut it out or you’ll sue. Although a trademark owner can send such a letter directly, it may have more impact and get faster results if it comes from a lawyer.
If the infringer doesn’t cease-and-desist, then the next step in enforcement is filing a lawsuit. Most trademark owners will choose to file suit in federal court.
If a trademark infringement suit is successful, the trademark owner may obtain remedies including:
- Damages (i.e., money)
- A court order telling the infringer to stop using the mark
- A court order requiring the surrender or destruction of infringing items
- A court order that the infringer will pay your attorneys’ fees
Working with a Trademark Attorney
An experienced trademark attorney – preferably one who’s admitted to practice before the US Patent and Trademark Office – can tell you more about your rights and remedies whether you’re a plaintiff or a defendant in a trademark infringement case.
As a litigator, I handle enforcement actions as well as trademark prosecution.