You’ve spent years building your business. You’ve invested your time, effort, energy, and money into developing something that will provide for you and your family, not to mention for your employees and their families. You’re proud of what you’ve accomplished. It’s yours and you made it. And then one day you wake up and discover that someone has copied you. They’ve opened shop using your name, or a name designed to be confused with your name. The goods and services they offer are the same as yours, they’re marketing to the same customers that you market to, they’re operating in the same market as you (maybe opening a shop near you or just occupying the same Internet space as you), and worst of all, you find out that customers who were looking for you are finding this upstart business and hiring them instead of you. It’s a business owner’s nightmare. So, what do you do?
Prevention
The first step is prevention. The old saying goes, “an ounce of prevention is worth a pound of cure.” In the trademark context, that means:
- Picking the right trademark
- Registering your trademark early
- Policing your trademark
Picking the Right Name
Picking the right name is probably the most important step in protecting your trademark rights down the line. I’ve covered this topic in posts like What Can’t Be Trademarked and Can I Trademark a Slogan or Tagline?, but the reader’s digest version is this: you should avoid descriptive trademarks and instead adopt a unique and inherently distinctive trademark.
Trademarks that include surnames (Smith, Jones, Rodriguez, etc.), geographic terms (Florida, Jacksonville, downtown, etc.) laudatory terms (best, top, elite, etc.), and terms that describe the qualities or characteristics (café, design, financial, etc.) are typically considered merely descriptive. These make for weak trademarks. While it’s tempting to adopt a descriptive trademark because customers will be immediately educated as to what your business offers, the short-term benefits of using descriptive trademarks are eclipsed by the long-term costs in terms of lack of protectability.
Business owners who invest the time to select names that are unique and distinctive enjoy much stronger protection. Distinctive marks fall into three categories:
- Suggestive marks that hint at qualities of a product without directly describing it (for example, IGLOO or YETI for coolers).
- Arbitrary marks that use real words in unrelated contexts (such as APPLE for computers).
- Fanciful marks that are entirely invented for use as a brand (like XEROX or KODAK).
These categories of marks are easier to protect under trademark law and give businesses a stronger foundation for building brand identity.
Registering Your Trademark Early
Registering your trademark early provides considerable benefits. I’ve covered this topic in greater detail in prior posts like What is “Common Law” Trademark Protection and How Does it Work? and When to Trademark Your Business Name. The bottom line though is that trademark rights are based on priority and continuity of use, but the scope of those rights is limited without registration.
A federal trademark registration gives you statutory rights throughout the nation; not just the local geographic market in which you operate. A federal trademark registration also provides a presumption of ownership and validity that is absent without the registration.
And, after 5 years of continuous post-registration use, it becomes eligible for “incontestable” status which limits the defenses that a potential infringer or challenger can assert against your trademark rights and which, in the 11th Circuit (Florida, Georgia, and Alabama) confers a presumption that your trademark is strong.
Policing Your Trademark
Infringers cannot be ignored. The sooner you find them and the sooner you enforce your rights against them, the easier it is to avail yourself of those rights. Hand in hand with that, failure to police your mark can allow infringers to raise defenses such as laches (similar to statute of limitations arguments), long-term coexistence, or extensive third-party use (where you have allowed multiple potential infringers to exist). These defenses, particularly long-term coexistence and extensive third-party use can severely limit a trademark holder’s rights and businesses should be diligent to avoid these pitfalls.
Enforcement
Tailoring a strategy for enforcement of trademark rights is a highly fact specific process. That process will be different for every business, every trademark, and every challenge to that trademark. That said, there are a few basics that either apply broadly, or are common enough for general discussion:
- Cease-and-desist letters – Often the first step, used to put an infringer on notice of your rights and demand that they stop.
- Trademark infringement actions – Lawsuits filed in federal court to enforce rights against unauthorized use of a mark.
- Preliminary injunctions – Court orders that stop infringement at the start of litigation while the case is ongoing.
- Oppositions and cancellations before the USPTO’s TTAB – Proceedings to challenge trademark applications or registrations.
Cease and Desist Letter
Most trademark disputes start, and many end, with a cease-and-desist letter. This is a simple letter informing an infringer of your rights and that their conduct infringes your rights. In most cases, you should not skip this step. Delivering a cease-and-desist letter preserves your later arguments in court that the infringer is engaged in willful infringement. Establishing willful infringement is critical to recovery of damages, and potentially, to recovery of attorneys’ fees.
Trademark Infringement Action
If the infringer continues infringing after receiving the cease-and-desist letter, the next step is typically to file suit in federal court. Depending on your trademark rights, including whether you have a federal trademark registration, how closely the infringer’s use copies your trademark, the manner of infringement, and the strength of your own trademark rights, common causes of action include:
- Trademark infringement under 15 U.S.C. § 1114 – bars the unauthorized use of a registered trademark in a way likely to cause consumer confusion.
- Unfair competition under 15 U.S.C. § 1125(a) – prohibits false designations of origin and misleading uses of marks even without a registration.
- Cybersquatting under 15 U.S.C. § 1125(d) – targets the bad-faith registration or use of domain names that exploit another’s trademark.
- Counterfeiting under 15 U.S.C. §§ 1116(d) and 1117(b)–(c) – provides remedies for willful misuse of a mark, including injunctions, enhanced damages, and statutory damages.
- Dilution under 15 U.S.C. § 1125(c) – protects famous marks from blurring or tarnishment regardless of confusion or competition.
- Common law trademark infringement under state law – allows owners to enforce unregistered marks when use is likely to confuse consumers.
In trademark cases, courts have discretion to award attorney’s fees to the prevailing party in “exceptional cases.” Under 15 U.S.C. § 1117(a), this typically requires showing willful infringement, bad faith, or other egregious conduct. Attorney’s fees can therefore be a powerful tool both to deter infringement and to compensate brand owners forced to enforce their rights, but it’s important to note that “exceptional cases” are just that; the exception, not the rule. Setting up your case for success on a fees claim starts early with registration, policing, and an immediate cease and desist letter being delivered.
Preliminary Injunction
In appropriate cases, a trademark owner can pursue a preliminary injunction at the start of the case. If granted, a preliminary injunction prohibits the infringer from continued infringement of the plaintiff’s trademark rights through litigation and trial. Where a preliminary injunction is granted, defendants rarely pursue litigation to trial and typically settle quickly.
To prevail on a motion for preliminary injunction, the trademark owner must establish:
- A likelihood of success on the merits
- Irreparable harm if the injunction is not granted
- That the balance of hardships favors granting the injunction
- That the injunction serves the public interest
Delay in seeking a preliminary injunction can, by itself, be grounds for denial. For this reason, acting quickly is critical when infringement is discovered.
Oppositions and Cancellations Before the TTAB
If a potential infringer has filed an application, or even acquired a registration, before the United States Patent and Trademark Office (the “USPTO”), litigation can be commenced before the USPTO’s TTAB. The TTAB has limited jurisdiction and can only decide whether or not a trademark may be registered. It cannot, for example, issue injunctions or award monetary relief. However, parties often choose to litigate their disputes before the TTAB because the TTAB provides a lower risk, and sometimes cheaper, venue for deciding a trademark dispute. Also, the TTAB is the only venue in which you can litigate the registrability of a trademark application filed on an “intent to use” basis. Without use, federal courts will typically dismiss an action as not being “ripe.”
Trademark disputes can be disruptive, expensive, and damaging if they are ignored or mishandled. The best protection starts early with a distinctive name, a timely registration, and consistent policing of your rights. But if infringement does arise, you have a range of enforcement options, from cease-and-desist letters to federal litigation. The key is to act quickly and strategically. Protecting your trademark means protecting the brand you worked so hard to build. In many cases, the difference between growth and loss comes down to how promptly and effectively you enforce your rights.
To ensure your brand is fully protected, contact Jimerson Birr.