Thursday, February 09, 2012

What Do I Do If...

someone is infringing on my trademark?

Let's assume you've taken our advice to have comprehensive research conducted every 2-3 years and lo and behold, someone is infringing on your mark!

While, yes, it can be maddening to see someone using your good name regardless if done intentionally or on accident (though the intentional misuse is certainly far more annoying). 

However, check your emotions at the door. Most likely, this company is blissfully ignorant of your trademark and is using it in good faith (i.e. assuming that they have every right to the name). You were savvy enough to have comprehensive research conducted before you filed; others may not be as up to speed as you.

That being said, you'll still have to decide what to do next.

1) Do your homework. This company popped up in the research but you'll want to dig a bit more. Doing all of this BEFORE calling an attorney will save you time and money. Plus you'll be educated in case this happens again.

If they have a pending trademark application you'll have their Serial Number and can check their filing here. Go to the Documents tab. Links to click on include:

     * Application - Copy down the contact info, including their attorney. Note any first use dates.
     * Specimen - If they filed as in use, there should be a specimen. Copy & paste this into the file you're creating.
     * Offc Action Outgoing - If you see this link that means the USPTO has an issue with their filing, one of which may very well be a refusal based on your prior filing. 

If the company popped up in the Common-Law research then finding out more info may be a bit more difficult, though certainly not impossible. The research will show you their web site, address, and/or phone number. Cull as much information as you can from these sources. Start with a web search if you don't already have a web site - use the name, reverse address, phone number, etc. to try to locate a site. Information to gather includes:

     * Owner Information including phone numbers, addresses, owner names, etc.
     * Start Date - you can typically find this information on a site's About Us page. If there is no web site check the records provided. An incorporation or fictitious filing record will contain a date.
     * Trade Area - again, check the About Us page but also look at Locations, Services, etc. If there is no web site this may be a bit trickier to determine. 

We offer a competitive check service you may want to consider if you're finding this process difficult. 

We interrupt this broadcast to bring you this message --> Do NOT call them about their infringement directly. Absolutely resist the urge to take matters into your own hands. 

2) Once you've got yourself a hefty file on the infringing company, read it again. Now ask yourself some important questions:

     * Am I going to lose customers to this company? Is it reasonable for people to confuse me with them and vice versa?
     * Do our trade areas cross? Am I only selling on the West Coast with no plans to expand and they're only selling in one state, county, city on the East Coast? Do I want to sell in the areas that they're in even if I'm not yet doing so?
     * Has this been willful infringement? Have I already lost sales and customers to them? (If you're answering yes to either question then you'll want to gather evidence that shows that)

3) Call a trademark attorney. Even if the best case scenario exists (the USPTO is already in the midst of rejecting their application), you will still want to seek that legal advice. You've done your homework, asked and answered some determining questions - now you're ready to take all of that information to a trademark attorney to decide your next step.

The question of what that next step is a tricky one; check out this great article for more on that subject.

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