For many companies, trademarks are important business assets built through goodwill and reputation. They can be subject to misuse through infringement, dilution, cybersquatting, unfair competition, false advertising, and tarnishment. Even a vigilant trademark owner may not find all the possible misuses of a trademark by competitors and other members of the public. However, a failure to enforce a trademark by monitoring the mark for misuses will result in a weakening of the mark and loss of distinctiveness, which can lead to a loss of the trademark.
When you own a trademark, you can enforce your rights if the trademark is being used in association with products or services that compete with yours, consumers are likely to be confused as to the source of the products or services by a competitor's use of the trademark, the infringing trademark is being used in the same geographic region that you use it, or it is being used on related goods that are likely to be purchased by the same consumers.
Most infringement actions begin with cease and desist letters sent to an infringer demanding that the infringer stop using the mark at issue. Infringement lawsuits are expensive, and many members of the public will stop infringing if they become aware that a mark's owner is lawfully asserting his or her trademark rights. Sometimes multiple cease and desist letters are sent, or negotiations are entered into.
However, if an infringer persists in the infringement, you can file a lawsuit to stop the misuse. If the mark is registered with the United States Patent and Trademark Office (USPTO), you can file a lawsuit in federal court. If the mark is unregistered and the infringing mark is being used in the same state, your dispute may be resolved in state court.
In federal court, you will have to prove that the infringing mark is likely to confuse consumers and that your business suffered damages due to the infringement. In many cases, the court will award an injunction to stop further infringement. However, in some cases, you can also obtain monetary damages. If the infringer acted in bad faith by knowingly or intentionally copying your trademark, the court may require the infringer to give up its profits as well as paying additional damages and attorneys' fees.
Under federal and some state laws, you can sue to prevent your trademark from being used by another person or company if your mark is famous and the other use will "dilute" or weaken the mark's reputation for quality or render it generic through overuse. Dilution lawsuits can only be brought in connection with famous marks, so it is common for those defending against a dilution suit to argue that the mark is not distinctive or recognizable.
How does dilution differ from infringement? Dilution applies even if consumers are not likely to confuse the source of particular goods or services with those sold in connection with the famous mark. In an infringement suit, there must be a likelihood of confusion. Infringement suits are most often brought when the same or similar mark is used in connection with the same goods or related goods, such as computer technology. However, the rules of dilution apply even when the same or a similar mark is used in connection with two very different goods, such as perfume and cheese.
A trademark owner need only protect his or her trademark by policing the mark and using it in the marketplace to identify products or services. The products or services do not have to be actually sold, but they have to be offered to the public under the trademark. The owner can also reserve for future use a trademark that is not already been used by filing an "intent to use" trademark registration application with the USPTO. The mark will only be registered, however, when it is actually used in commerce, and only if it is used within the required time limits or extensions of time.
If you receive a cease and desist letter because a trademark owner claims you have infringed, diluted, or otherwise misused its mark, you may have several defenses. You can attack the validity of the mark if it is unregistered. For example, you may be able to show that a mark is purely descriptive and has not acquired a secondary meaning if it is not registered. You may be able to defend on the grounds that the mark has become generic. In an infringement suit, you may also be able to show that there is no likelihood of confusion. Those that have been sued in connection with their use of a mark in commentary, criticism, or art may be able to assert First Amendment rights.
