Trademark Misappropriated? What Are Your Next Steps?

Hello:

Sorry for the long hiatus.  I have thankfully been very busy with clients. Finding the time to write on this blog has been a chore.  Through my work experiences for the past 6 months, I have some helpful intellectual property law tips I would like to share.

Here is the scenario.  You wake up one morning and you find out that a major brand, publication, or celebrity is using your trademark.  You have been using it for 5 years before this brand recently starting using it, but you have never went through the formal trademark registration process with the USPTO.   You wonder, do I have any trademark rights without USPTO registration? & How can I reclaim my trademark from this larger more powerful company?

1. Trademark Rights.

There are two types of trademark rights:  common law and federal.

Common law right.

Any person or business entity that is first to use a unique name, logo or phrase (trademark) that identifies a product or service available for public consumption, has a common law trademark right.  This right attaches regardless if the trademark is registered with the USPTO.  There are limitations to this right.  A common law trademark right only is applicable to the region where the trademark originates or is sold.

Federal trademark right.

A federal trademark right is granted by the USPTO and there is a registration process.  Once a trademark receives an official registration, it is valid in all 50 states.

Conclusion:  Owners who are first to use non-registered trademarks do have priority to use those marks exclusively in their state or region.

2. How Do I Assert My Common Law Trademark Rights Against the Larger Company?

The most effective way to assert your trademark rights against any infringer is to put them on notice they are infringing your mark.  I have settled 90% of my client's trademark disputes through a cease and desist letter.  Although a common law trademark right only gives the owner priority to use the mark in the owner's region, a common law right can stop the company from selling an infringing product or providing a service in that region.  Also if the larger company attempts to register the mark with the USPTO, the USPTO can bar registration if they find the competing priority common law trademark.   Unless the larger company can prove the common law trademark owner agreed to allow the company to use the mark or the common law trademark owner abandoned the mark, the USPTO will be very hesitant to allow registration.

In sum.....

As I have discussed before cease and desist letters are very important in policing and maintaining your trademark whether it is registered or not.  Trademark owners can lose their trademark rights if they allow others to use or infringe the mark without defending it.  How does this happen?  A company that really wants to own the mark and register it with the USPTO can petition the USPTO and submit evidence the mark was abandoned through non-activity (when an owner ceases using a mark) or non-defense of infringement (not expressly putting others on notice of their infringement and demanding they cease).  

Trademarks are valuable intellectual property. Defend and protect them wisely.