Navigating Trademark Infringement: A Business Owner's Guide

Many business owners find themselves in a situation where another party has trademarked their business name or marks and are threatened with a lawsuit. This can be particularly daunting for a longtime local business that hasn't registered with the USPTO. In this article, we explore the steps you can take to protect your business and your legal options.

Understanding Your Position

If you've been in business for 17 years, but haven't registered your business name or marks with the USPTO (United States Patent and Trademark Office), your situation can be complex. Generally, if someone has registered a trademark in a different state, it doesn't impact your local business unless that trademark has been registered with the USPTO.

However, it's crucial to understand the category of your product or service. If the opposing party has registered a trademark with the USPTO, you need to seek guidance from a competent trademark attorney to assess your rights and potential legal actions.

Strategies to Avoid Attorney Costs

Before engaging a lawyer, consider proactive steps to mitigate legal costs. One effective approach is to inform the trademark holder about your lengthy business history and the evidence of your use of the mark. If the other party is in good faith and finds your claims compelling, they may choose to drop the matter amicably, saving both parties legal fees and potential stress.

However, if the other party persists, it's advisable to engage a legal professional to navigate the complexities of trademark law. Attempting to handle the situation independently could exacerbate the issue. A trademark attorney can help you evaluate your legal options and provide recommendations tailored to your specific circumstances.

Due Diligence on the Plaintiff

When faced with a trademark infringement claim, it's essential to gather as much information as possible about the plaintiff. This includes:
When did they start using the mark? When was it registered? What business are they engaged in? What classes did they register this mark at the federal level?

Understanding these details can help you make informed decisions about the case. For example, if you have been using the mark in your local area before the other party registered it, you hold a common law trademark. This means you have a prior right to use the mark in your geographic area. The strength of your case will depend on whether you used the mark first or the other party registered it with the intent to sue others.

Trademark infringements can vary significantly based on the first use and the degree of use. If you can prove that you were using the mark first and were using it without the intent to deceive, you may have a solid defense. Conversely, if the other party can prove they registered the mark with the intent to sue others, you may have a stronger case for legal action. Consulting with a trademark attorney is crucial to navigate these complex issues effectively.

Trademark Law: A Layered Approach

Trademark law operates on multiple layers, each with unique rights and protections. Understanding these layers can help you better defend your business.

Common Law Trademark

Common law trademarks arise from the actual, continuous use of a mark by a business in a specific geographic area. If you can prove that you've been using the mark in your local area for an extended period, you may have common law trademark rights. These rights are limited to the area in which you've been using the mark, typically a county or metropolitan area. Common law marks are protected under state unfair competition laws.

State Registrations

If you operate on a statewide level, consider registering your trademarks with your state. State registrations provide broader geographic protection and can be relatively quick and inexpensive. This can be advantageous if your business expands to cover the entire state.

Federal Registrations

The highest level of protection is a federal trademark registration, which covers the entire United States and grants some international rights. While federal registration is expensive and time-consuming, it offers the broadest legal protections. If you're expanding your business nationally or internationally, a federal registration is worth considering.

Types of Marks and Registration Process

Trademark rights can be applied to various types of marks, including:

Word marks Design marks Word and design marks

You can register a mark in one of three ways:

Word portion only as a word mark Design portion only as a design mark Both word and design as such

The registration process includes a search for "confusingly similar" marks. If similar marks are found, registration may be denied. To ensure a smooth registration process, it's advisable to perform thorough research and consult with a trademark attorney.

For a more detailed understanding of trademark law and its implications, seek guidance from a trademark attorney. They can help you navigate the complexities and provide you with the best possible strategy to protect your business.