Many businesses spend substantial time, energy, and resources to advance public recognition of their trademarks. This is particularly important for consumer products, such as shoes, computers, groceries, airlines, and video games—all of which need to make an impression on consumers. Businesses often try to secure memorable names and eye-catching logos so that consumers will notice them within an otherwise crowded marketplace.
But what happens when an unauthorized third-party company begins using your business's trademark—whether your name, your logo, or both—to sell its own products or services? Not only might this confuse consumers and cause them to purchase the infringer's goods, but it also might dilute the recognition and uniqueness of your trademarks. How should you react?
Basics of Trademark Law
Before discussing ways that you might respond to trademark infringement, we must first understand what trademark law does, and how. Trademark law protects distinctive words, phrases, logos, symbols, slogans, and any other devices used to identify and distinguish products or services in the marketplace. The Lanham Act is the statute that largely controls federal trademark law.
While it's not legally required, trademarks are often registered with the U.S. Patent & Trademark Office (USPTO), the federal agency charged with administering trademarks. Registering with the USPTO confers many legal benefits, including nationwide protection, and also permits the trademark holder to sue infringers in federal court.
Trademark infringement is the unauthorized use of another person or company's registered trademark. Imagine that your clothing business has a registered trademark on the name "VC" for shoes. You manufacture and sell "VC" shoes with the "VC" logo on the back heel. Consumers know to look for your brand in stores, and you invest a great deal of money into advertising. Now imagine that some other company begins making shoes with a "VC" on the box, or on the shoes themselves. Consumers may be confused into thinking that they are buying your shoes, when in fact they are buying a competitor's shoes. Moreover, if the competitor's shoes are low quality, the consumer may tell all of their friends that "VC shoes are terrible." This will damage your reputation in the marketplace, even though there is nothing wrong with your shoes.
Thus, trademark law allows your business to sue the infringer for money damages, as well as for a court order to prevent further infringement.
Writing a Cease-and-Desist Letter
The first step when facing trademark infringement is not, in most cases, to run to the courthouse. Instead, many instances of infringement can be resolved by a strongly written cease-and-desist letter. Also referred to as a demand letter, this is simply a formal letter notifying an infringer of its wrongful conduct and demanding that it be stopped.
Your demand letter should outline the basics facts of the infringement. What does your trademark cover? What conduct did you observe from the infringer? On what dates did you observe the conduct? Be as specific as possible. You can attach a copy of your USPTO registration, noting that your registration covers (in the example above) the term "VC" for all clothing-related products. You can also attach specific photographs or websites that demonstrate the infringement (such as a printout of the infringer's website that is selling "VC" shoes).
Your cease-and-desist letter should end with a specific demand: Stop the trademark infringement within a certain number of days (typically two weeks or less). The narrow deadline is important, because it will hopefully motivate the infringer to take the letter seriously and act fast.
Your cease-and-desist letter should be printed on your business's letterhead and carefully proofread. Send it via a service like Federal Express or UPS, so that the recipient realizes that the contents are important. You can read more about tips for how to write an effective cease-and-desist letter.
Initiating Litigation Against the Trademark Infringer
Unfortunately, cease-and-desist letters do not always work. What can you do if the infringer simply ignores your letter, or writes back and says that your trademark is invalid? Here, you have two choices: You can either ignore the infringer and hope that the infringement does not affect your business, or you can fight the infringer in court.
A lawsuit is a formal proceeding in which you ask a court to award money damages against the infringer for the infringement, as well as grant a court order to prevent future infringement. Lawsuits can be time-consuming, sometimes taking years to resolve.
To file an infringement lawsuit, you should consult an attorney—but not just any attorney. Attorneys, like all professionals, have specialties. To fight trademark infringement, you will want to speak with an attorney with experience in intellectual property law, specifically trademark law.