How to Protect Against Trademark Infringement

How to Protect Against Trademark Infringement

by Joe Runge, Esq., September 2016

Trademark protection is different from other forms of intellectual property. Trademark law provides exclusive rights to a registered trademark for as long as you use it. If you carefully monitor and protect your trademark, it is intellectual property you can use for a very long time.

To make sure that you can use that trademark, you have to take steps to fully protect it. Then you will continue to monitor your trademark and make sure infringers or other uses do not limit your ability to enforce it.

First, What Is Trademark Registration?

The next time you are in the grocery store, look at the packages of your favorite products. Some of the logos have a "TM" next to them, while others show an "R" in a circle. Knowing the differences between these two indicators is important in protecting your trademark.

The TM mark on the package means that the seller is informing the world that the logo or name or image is a trademark. By putting that "TM" next to the logo, the producer is creating intellectual property.

A trademark is different from a copyright or a patent. Trademarking does not protect the right to reproduce a logo. A trademark protects your investment in a relationship with your customers. It is a mark that tells the world that this product comes from a particular source—from you. Your trademark protects the association your customers make between the products you make and you the producer.

Trademark protection guards your ability to use the mark in association with your goods and services. It allows you to build a brand—to set a particular expectation with your customers. That relationship begins as soon as you sell products with the trademark affixed.

By filing a trademark application with the United States Patent and Trademark Office (USPTO), you are seeking the right to put that circle "R" logo next to your trademark. Once the mark is registered, ignorance is no longer an excuse. The entire world is on notice and, if anyone infringes your mark, you will have the right tools to make them stop.

Second, What Is Trademark Infringement?

When another seller uses your mark, the other seller is infringing the trademark. The original producer's ability to stop the other depends on how the mark is protected. For example, if the other seller is unaware of the existence of a trademark or any expectations associated with it, then it may not a case of trademark infringement—unless the original producer has registered the trademark.

To win trademark infringement cases, you have to prove that the alleged infringer caused confusion as to the source of goods or services. Trademark violation can be very expensive to prove because of the evidence required to show likely confusion: customer surveys, social science data, and consumer psychology. All that data may be necessary to make the case that the infringer really did infringe your trademark.

Trademark monitoring is a full-time job. Beyond cutting into your business, infringement of your trademark weakens your ability to enforce the mark. The trademark protects the relationship between you and your customers. The longer another product uses your mark, the less clear your mark becomes to your customers. Tolerate that infringement long enough and you will lose more than time.

If you do not monitor your trademark, you could lose it. A trademark is an abstract thing to own. The trademark is how your customers know that your products come from you. If another person uses your mark, then that association is compromised. Your customers will no longer know what to expect from your products or to be sure that the product comes from you. Once a trademark is compromised, it can be very difficult to get back.

Beyond monitoring, you have to assert your trademark. Put an end to any infringement—fast. Send a cease and desist letter. Notify your customers. Do whatever you can to stop the infringement before it erodes the value of the trademark. Intellectual property rights are exclusive by nature: Use them to exclude your competitors.

Your competitors are not your only risk, though. If a trademark becomes a generic way to describe a product, then you may lose your intellectual property rights to the trademark. Terms like escalator or xerox are names that were once protected but have become generic—largely due to the success of their products. To keep your trademarks robust and enforceable, be sure to avoid using the mark as a generic way to refer to a class of products.

Use It or Lose It

More than other forms of intellectual property, trademarks protect your ability to use your mark. If you stop using the trademark, your ability to enforce those rights can get limited or can disappear entirely. If you keep your trademark in use and monitor your competitors, that will go a long way toward keeping your mark strong.

Protect yourself from trademark infringement by registering your trademark through LegalZoom. The process of trademark registration is simple and affordable. Begin by answering a few simple questions. We'll work with you to assemble your application and conduct a trademark search to reveal any potential conflicts. Then, we'll file your completed application with the U.S. Patent and Trademark Office (USPTO).