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If you are starting a business, one of the first things you need to consider is how your brand will be represented to consumers. For your business to be successful, you will have to select a name, logo, catchphrase, or symbol that makes you stand out in the marketplace. However, with so much competition, there’s a chance that your mark might already be in use and have been registered with the United States Patent and Trademark Office (USPTO). No matter how unique you think your mark is, it’s critical to take steps to avoid accidental trademark infringement.
Trademark infringement is defined by the USPTO as the unauthorized use of another’s mark in such a way that it would likely cause confusion, deception, or mistake as to the source of the goods or services. To prevail in a claim for infringement, a plaintiff must show that they own a valid trademark and have priority rights. It’s not necessary to establish actual confusion between two marks. Rather, an accuser must only prove that consumers would likely be confused.
The following factors would be considered to determine whether a likelihood of confusion exists:
Other factors that might be evaluated by a court in determining infringement include where and how the goods or services are marketed and sold, the strength of the plaintiff’s mark, the conditions under which the goods are purchased, and the range of prospective consumers. A court would also look to see if there is any evidence of actual confusion.
In trademark law, it does not matter if the trademark infringement was on purpose, or it happened by mistake. A party accusing another of trademark infringement is not required to show willful intent. Significantly, ignorance of trademark law is not a viable defense to an infringement action.
When you’ve spent so much time and capital building your brand from the ground up, the last thing you need is to find out you can’t use the mark that embodies it. In such cases, not only would brand development and marketing efforts be wasted, but re-branding could result in a negative perception among consumers and create bad publicity.
The best way to avoid accidental trademark infringement is to do your diligence before you begin using the mark in commerce to determine if a similar mark is already being used by another company. Importantly, the standard for infringement is not whether two marks are identical. It is whether they are similar enough to confuse consumers. Conducting a trademark search before you file your application with the USPTO can help you identify any similar marks already in use.
A comprehensive trademark search doesn’t stop with a knock-out search using the USPTO’s TESS database to identify exact matches. Trademarks are highly nuanced, and the search technology can only recognize exact matches. With a comprehensive search, it is imperative to look for phonetic similarities, trademarks that have the same meaning, and any other variations that could make two marks similar.
There are several types of trademark searches that should be conducted to ensure an accurate and thorough clearance report. If no issues are found in the TESS database, you should look at the state government databases. While companies aren’t required to file an application in every jurisdiction in which they sell their products or services, local business owners may choose to file only in their state. Regardless of whether a trademark is registered with the USPTO, if a state registration was filed before you began using the mark in commerce, it may mean that person has priority rights to the mark.
A common law search looks for marks that haven’t been registered in any database. It involves searching through news, businesses, public records, legal records, and the internet. The objective of this type of search is to find out if your mark is already being used by another business — even if it’s not registered with the USPTO.
In the event another business accuses you of infringing upon their trademark, you could be forced to give up use of the mark by which consumers recognize your brand. Before litigation is commenced, you might receive an informal letter from the accuser advising you that they have priority rights to the mark. If you continue to use the mark after being notified of your mistake, a formal cease and desist letter may come from the accuser’s attorney.
If you do not stop using the mark, the accuser may serve a summons and complaint on you, requiring you to respond by a certain date. These documents are filed with the court and commence the lawsuit. If you fail to respond to the papers and appear in the action, the court could enter a default judgment against you.
In a case involving accidental trademark infringement, you may have several options. You can challenge the claimed trademark, refute that the owner has established infringement, or assert another defense. In some cases, it may be possible to negotiate a settlement with the other party in which you agree to take certain actions to avoid the likelihood of confusion.
Remedies available to a plaintiff who prevails in a trademark infringement case are generally limited to injunctive relief. This would prohibit you from continuing to sell products that bear the mark. An injunction can bar your use of the mark entirely, or it can come with specific terms and conditions. You might also be required to pay the plaintiff monetary relief for the damages they incurred by your use of the mark — including their lost profits and the legal costs they incurred for bringing the action.
Accidental trademark infringement can be a serious matter, resulting in harm to your business and your bottom line. A knowledgeable trademark attorney can guide you through every step of the registration process to ensure your mark is cleared for use and you avoid potential legal action. Based in Ann Arbor, Michigan, Trademark Lawyer Law Firm, PLLC assists business owners nationwide with a variety of trademark matters. With a track record of over 6,000 trademarks successfully registered with the USPTO, we are committed to providing our clients with high-quality counsel at reasonable rates. Contact us for a complimentary 15-minute consultation today.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
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