If you notice that someone abuses or misuses your trademark, you have to take action right away. But does fair use cover everything? And what is a cease-and-desist letter? In this article, we’ll show you how to tackle any trademark violations you might face.
Why Maintain Your Trademark?
If someone misuses your intellectual property, they could be making money from it that belongs to you. On top of this, they might damage your brand. Being proactive about your trademark will protect you from future infringements.
Any trademark you file in the US will last for ten years. You must also confirm that the trademark is still in use after five years. If you fail to confirm or renew the trademark, you’ll no longer have exclusive ownership over it.
Seven Steps for Tackling Trademark Misuse
A trademark violation can lead to a lengthy court case. However, a formal warning often works just as well. Here’s how to protect your IP if you notice someone copying it:
1. Confirm Your Trademark
Make sure your IP is still active through the USPTO’s trademark database. Check that it hasn’t lapsed over the years. Use your own judgment to confirm the similarities to your work. If they’re too close for comfort, you might have a case.
If you’re relying on a common law trademark, this only offers limited protection. It also only helps within the US. If someone copies your IP abroad, there’s little you can do. This is why you must have an active, officially registered trademark.
2. Check Fair Use Doctrine
Depending on how they’re using your work, it might come under fair use. If they’re making their own review of it, for example, this is usually fine. However, they should only use the minimum of your work necessary to make their points.
Fair use works on a case-by-case basis. A judge will evaluate the work against multiple factors. For example, they’ll check if the other person made money from it. If they did, this makes it less likely to fall under fair use.
3. Gather Evidence if Someone Misuses your Trademark
If there’s any doubt in your mind that it’s fair use, take pictures or recordings. Store the evidence securely, and collect (dated) photos of your own work. You may have to use this to prove the similarities between the two pieces in court.
Write descriptions about how they’re using the work. Are they selling prints of a design that you created? Did they sample one of your tracks in their latest album? Every detail matters and can help you prove there’s been a violation.
4. Send a Cease-and-Desist Letter
A cease-and-desist letter is a formal warning for someone to stop using your IP. This comes with the promise of taking them to court if they don’t stop. Use a free online template to save time and money.
The letter should detail your ownership and provide evidence of misuse. Include a deadline that they’ll need to abide by. If they keep using your content after this point, you can then begin legal action against them.
5. Negotiate With the Other Party
The other party might start negotiations with you after receiving this letter. If this happens, make sure you only agree to anything with the promise of fair compensation. You could also stand firm and request they change the work.
There’s also a possibility that the other side will dispute any intentional violation. If this happens, they might even welcome a legal challenge. Alternatively, they may agree to change their design to avoid brand confusion in the future.
6. Report the Offense
If they don’t budge, you can first report their work through informal channels. Contact the online platforms where they host work that misuses your trademark. Amazon, ArtStation, Spotify, and many other sites have full policies for these situations.
You’ll once again have to provide evidence of infringement. You must emphasize that your work was first. It also helps to use the site’s built-in brand protection features. For example, Amazon’s Brand Registry lets you easily defend your trademarks on their platform.
7. File a Trademark Infringement Lawsuit
Should all else fail, your last resort should be filing a trademark lawsuit. At this point, you’ve given the other party plenty of opportunities to stop. This will leave you with no choice other than to pursue full legal action against them.
This can lead to a lengthy, expensive court case. However, if the judge rules in your favor, you’ll get compensation. You might even be able to claim the defendant’s profits. This depends on the severity of their trademark misuse.
Conclusion
A cease-and-desist letter might be all you need to deal with a trademark dispute if someone misuses your trademark. To save money on legal fees, use an online template. If they dispute your claim, however, you might have to go to court.
