How to Respond to Trademark Infringement

How to Respond to Trademark Infringement

After you've put in the work to secure a registered trademark—and used it in commerce to build up goodwill with customers—the last thing you want is for someone to steal your mark, especially if you’re a small business owner. 

In this guide, we'll walk you through what infringement is and the various steps that trademark holders should take to protect their rights. 

What Qualifies as Trademark Infringement?  

Trademark infringement is the unauthorized use of a trademark in connection with competing goods and/or services, resulting in confusion among consumers. This may result in lost sales and damage to your brand.  

It can be difficult to determine whether your trademark rights have been infringed on. If you suspect that your brand has been copied, you can evaluate the case based on these trademark infringement elements: 

  • The form of the marks - Are the two marks identical or very similar, either in phonetic sound or visual appearance? 
  • The similarity of the commodity - Do the goods or services associated with the infringing mark directly compete with yours? 
  • The market for the commodity - Are the infringing goods or services sold in the same geographic area and/or online marketplaces as yours?  
  • The infringing use - Does the use of the mark suggest a connection with your product? For example, if the infringer uses your mark on its own products, or uses your mark in a way that suggests it is an authorized dealer of your products.  
  • The strength of your mark - Is your mark already well-known and easily recognizable by consumers? Note that infringers stand to benefit more from appropriating a distinctive, well-known mark.  

If you can identify similarities between the suspected mark and yours, and a plausible motive to capitalize on your trademark, you may have a strong case for infringement. 

Taking Action to Stop Infringement  

While registering your business name and logo with the US Patent and Trademark Office (USPTO) grants you rights to protection under trademark law, it does not automatically prevent your marks from misuse. You’ll have to be proactive and enforce your rights to stop others from infringing on your intellectual property.  

Once you have determined infringement, contact a legal expert. They can guide you through the process of enforcing your intellectual property rights and help you avoid any costly mistakes. 

Here are some steps you can take to enforce your trademark: 

Send a Cease-and-Desist Letter  

Legal experts recommend sending a cease-and-desist letter as your first act of defense. This is a formal demand for the infringer to stop using your mark, specifying the infringing use and how it violates your rights as a registered trademark holder. The letter should also state a threat of legal action if the accused does not comply.  

You aren’t required to employ a lawyer to prepare a cease-and-desist letter. But if you're not sure what to include in your letter, or how to word it in order to get the desired response without crossing any ethical lines, you may want to consider hiring one. 

A cease-and-desist letter sent by an independent claimant, like a small business owner, is not legally binding. However, sending this letter can often be enough to get an infringer to stop using your mark. Aim to send it out as early as possible.