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Enforcing Trademark Rights

You are the owner of a famous brand of shoes and athletic clothing. You have made millions off of your product with the well-known, three-stripe trademark on the side of your track jackets and running shoes, but this last season you've noticed a trendy clothing designer has been using a confusingly similar three-striped mark on their garments and footwear. What can you do?

If you follow what athletic giant Adidas America did, you can bring a lawsuit alleging that the defendant "intentionally adopted and used counterfeit and/or confusingly similar marks of the Three-Stripe Mark knowing that they would mislead and deceive consumers into believing that the apparel was produced, authorized, or licensed by Adidas, or that the apparel originated from Adidas." In other words, you can go about enforcing your trademark rights through litigation.

Below you will find FindLaw's step-by-step guide for pursuing legal actions to enforce Trademark rights in trademark infringement cases.

Trademark Case Basics

Understanding the basics of trademark law is essential for small business owners looking to enforce their rights. If you believe your trademark has been infringed by another person or business entity, there are many things you will need to prove to a jury.

As the plaintiff, you must prove:

  • You are the owner of a valid trademark
  • You have priority of rights
  • The defendant's mark may confuse consumers about where the goods or services come from

Going back to the Adidas example, the plaintiff would have to prove ownership of the Three-Stripe trademark, that Adidas has priority to use the Three-Stripe mark, and that when clothing is sold with a  similar mark there is likely going to be confusion by consumers as to who is manufacturing the product.

Registering Your Trademark

Federal trademark registration is the foundation of many successful trademark enforcement efforts. Register your trademark with the United States Patent and Trademark Office (USPTO).

Having a federally registered trademark on the Principal Register will give the plaintiff a legal presumption of the first two requirements. In our example, this means that all Adidas has to do to meet the first two criteria in a trademark lawsuit is to provide documentation of being on the Principal Register.

For Adidas, that is the proof that gives them the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. While a person or business is not technically required to register their trademark to have some rights in its use, registration has many advantages.

If you have questions about the trademark application process, contact a trademark attorney near you.

Gather Evidence

The first step in enforcing your trademark rights is to gather evidence that you are the original trademark owner. Gather evidence of the alleged trademark infringement as well. This evidence can include:

  • Unauthorized use of your trademark on promotional material, sales records, and social media
  • Financial loss due to the infringement
  • Consumer confusion with brand names or logos
  • Your trademark registration
  • Evidence of your trademark in use

The next step should include consulting with an intellectual property attorney. As an entrepreneur or startup company, you will want to have an attorney help assess your case and advise on the best course of action.

Cease and Desist Letters

You'll often send a cease-and-desist letter to the infringing party before filing a lawsuit. An attorney can help draft and send this formal communication to the infringer. This letter may outline the infringement concerns, the demands to stop infringing, and a request for monetary damages.

Negotiations and Settlement

If the cease-and-desist letter does not work, your attorney will likely suggest moving to a lawsuit. Often, the attorney will work on negotiations for an out-of-court settlement. Each party's legal representatives discuss negotiations and settlements but must get your approval to settle on the matter. These negotiations can include ensuring the infringing party changes its branding or company name. There may also be compensation for damages.

Trademark Infringement Lawsuit

If the settlement negotiations do not end with a feasible resolution, the next step is to file a trademark infringement lawsuit. The lawsuit will seek a court-issued injunction that prevents the infringer from using the trademark and can include claims for monetary damages. Assessing the likelihood of success of a trademark infringement case depends on factors such as:

  • Similar trademark comparisons
  • The likelihood of confusion
  • The strength of your trademark protection
  • The use of the mark

How Long Does a Trademark Lawsuit Take?

The time frame to end a trademark infringement lawsuit can be lengthy. Depending on the extent of infringement, the time period to gather evidence through discovery can be extended. For example, Adidas pursuing evidence of counterfeit claims internationally is going to take longer than one instance of an infringing design in Louisiana. 

The court's caseloads, or the number of trials ahead of your matter, determine when a trial will be held. Before trial, both sides have the opportunity to file motions based on procedure or take depositions, all of which take considerable time.

Enforcement by Legal Authorities

For criminal activities such as counterfeiting, trademark owners can work with legal authorities to enforce trademark rights. Infringers may face criminal charges as a result. This action is usually a deterrent against further violations.

Possible Remedies

A court has several possible remedies at its disposal should you prove successful in a trademark infringement case.

First, a court can order damages such as the cost of litigation, attorney's fees, and any profits the defendant made from illegally using the trademark.

Second, a court could order the defendant to stop indefinitely using the infringing mark. In many cases, this is called an injunction and is likely to be a part of the court's order.

Finally, a court can order the destruction of all infringing items. Depending on the court, there may be more remedies, but these are the most common.

Enforcing Trademark Rights: Related Resources

Get Legal Advice About Trademark Law

You don't have to own a famous shoe brand to be able to protect your trademark in court. If you believe your trademark is being used without your permission, you might have a case and your day in court. If you want to learn more about trademark protection, speak with a trademark attorney in your jurisdiction today.

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Contact a qualified business attorney to help you identify how to best protect your business' intellectual property.

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