Protecting your trademark is about safeguarding the trust and reputation you have worked hard to build. When another business uses a name or logo similar to yours, it threatens to unwind that effort by creating confusion in the marketplace. Your brand is a promise to your customers, and that promise is a valuable asset worth protecting.
Recent years have seen a surge in these disputes. One report found that 85% of brands experienced trademark infringement in a single year, an increase from 74% just two years prior. The core legal question is whether the similarity of the marks is likely to confuse customers about the origin of the goods or services offered.
The law provides a clear pathway to enforce your rights, from a formal letter demanding the infringing use stop, to legal action in federal court.
If you have a question about another business using your brand name or logo, contact the business law attorneys at Gross Law Group by calling (888) 858-1505 for a clear assessment of your situation.
Table of contents
- Key Takeaways for Protecting Your Trademark
- What Does Trademark Infringement Actually Mean?
- Your First Moves: Three Steps to Take from Your Office Right Now
- The Cease and Desist Letter: Your Formal Demand to Stop
- When the Letter Isn't Enough: Escalating Your Trademark Enforcement
- Frequently Asked Questions About Protecting Your Trademark
- Don't Let Brand Theft Undermine Your Hard Work
Key Takeaways for Protecting Your Trademark
- The legal standard is the "likelihood of confusion." Your case depends on showing that another's trademark is so similar to yours that customers are likely to be confused about the source of the goods or services, which directly harms your revenue and reputation.
- Start by documenting everything yourself. Before contacting a lawyer, your first step is to gather evidence, such as dated screenshots of websites, social media pages, and online ads, and even purchase the infringing product to preserve proof.
- A formal cease and desist letter is the primary enforcement tool. A letter from a law firm is the standard first step to demand the infringer stop. If ignored, the next steps include filing a challenge with the U.S. Patent and Trademark Office or a lawsuit in federal court.
What Does Trademark Infringement Actually Mean?
You may have discovered a competitor whose name sounds like yours, or whose logo feels a little too familiar. Trademark infringement is the unauthorized use of a mark that is so similar to yours that it is likely to cause confusion about the source of the goods or services.
The Real Damage of Customer Confusion
The consequences of customer confusion ripple through your entire operation, affecting your bottom line and your brand's future.
- Lost Revenue: The most immediate impact is financial. A confused customer might buy from the infringer by mistake, directly diverting sales that should have been yours.
- Reputation Damage: If the other business offers an inferior product or service, that negative reputation could incorrectly attach to your brand. A single bad experience a customer has with the wrong company tarnishes the goodwill you've spent years building.
- Brand Dilution: Over time, the uniqueness of your brand—the very thing that makes it stand out—fades in the minds of the public. This is a specific legal concept called dilution, which occurs when a famous mark's distinctiveness is weakened by an unauthorized use, even if the products don't directly compete. For example, using a well-known luxury car brand name on a line of inexpensive clothing could dilute the luxury brand's association with exclusivity and high quality.
The "Likelihood of Confusion" Test
To determine if infringement has occurred, courts use a multi-factor test to assess the "likelihood of confusion." Think of it as a collection of clues. While the exact factors vary slightly by jurisdiction, they generally include several key points.
- Strength of Your Mark: Is your name highly distinctive and well-known (like "Xerox" for copiers), or is it more generic? A stronger, more unique mark receives greater protection.
- Similarity of the Marks: Courts analyze how alike the marks look, sound, and feel in their overall impression.
- Similarity of the Products/Services: Are you both selling the same thing to the same audience? The more overlap, the higher the likelihood of confusion.
- Evidence of Actual Confusion: Have any customers actually contacted you by mistake or mentioned the other company? While not required, evidence of real-world confusion is very powerful.
- The Infringer's Intent: Did they knowingly copy your mark, or was it an honest mistake? The law does not require bad intent to find infringement, but it strengthens a case significantly.
Your First Moves: Three Steps to Take from Your Office Right Now
Before making any calls or sending any emails, the most productive actions happen right at your desk.
Become an Evidence Archivist
Your immediate goal is to preserve a snapshot of the infringement exactly as it exists today. Digital evidence disappears quickly, so acting promptly is key.
- Take Screenshots: Capture every instance of the infringing mark online, such as their website, social media profiles, online advertisements, and any listings on marketplaces like Amazon or Etsy. Make sure the screenshots are dated.
- Save URLs: Keep a running document with a list of every web page where the infringement appears.
- Make Purchases (If Applicable): If they are selling a physical product, order one. This provides direct proof of their use of the mark in commerce and allows you to assess the product quality, which is relevant to claims of reputation damage. Keep the product, all packaging, and any digital or physical receipts.
Assess the Scope of the Problem
Understanding the "where" and "how" of the infringement helps shape your enforcement strategy.
- Geographic Reach: Are they a local competitor in Pennsylvania, or do they have a national online presence? The broader their reach, the more significant the potential harm to your brand.
- Channels of Business: How are they reaching customers? Is it primarily through a physical storefront, an e-commerce site, or social media marketing? Knowing this helps identify the most effective places to intervene, such as contacting an online marketplace to have listings taken down.
Confirm Your Own House Is in Order
Before demanding that someone else stop using a mark, you must have your own ownership documentation ready.
- Gather Your Own Usage Evidence: Collect dated examples showing when you first started using your trademark and how you have used it continuously. This could include old marketing materials, dated invoices, business filings, or website archives. This is especially important for establishing "first use."
- Check Your Registration Status: If you have a federal trademark registration with the U.S. Patent and Trademark Office (USPTO), locate your registration certificate and confirm all details are correct. Federal registration provides a legal presumption of ownership and the exclusive right to use the mark nationwide in connection with your goods or services.
- Understand Your Local Rights: Even without a federal registration, consistently using your brand in Pennsylvania may give you "common law" trademark rights. These rights, however, are typically limited to the specific geographic area where you operate and are more difficult to enforce than a federal registration.
The Cease and Desist Letter: Your Formal Demand to Stop
A cease and desist letter is a formal, written communication that puts the infringing party on notice of your trademark rights and demands that they stop their unauthorized use.
While not a lawsuit, it is a necessary first step before litigation. It signals that you are serious about protecting your brand and are prepared to take legal action if necessary.
Why You Shouldn't Write It Yourself
While templates are available online, a poorly written letter does more harm than good. The risks associated with a do-it-yourself approach are considerable, and one misstep could compromise your legal position.
- It may be ignored: A letter coming from an individual or business owner is easier to dismiss than one from a law firm, which immediately communicates the seriousness of the matter.
- It could reveal your strategy: You might unintentionally give away weaknesses in your position or make legal arguments that are incorrect or unenforceable.
- It creates a written record: Anything you write could be used against you if the matter proceeds to court. An overly aggressive or poorly reasoned letter will undermine your credibility.
What Our Firm's Cease and Desist Letter Includes
At Gross Law Group, we handle the drafting of these letters to be firm, professional, and legally precise. The goal is to resolve the business dispute without a lawsuit. A letter we prepare typically includes:
- A Clear Statement of Your Rights: Identifying your trademark, stating whether it is registered or based on common law use, and providing the date of first use.
- Specific Examples of Infringement: Citing the documented evidence you gathered (e.g., "Your use of the name 'BrandXtra' on your website at [URL] and your social media profiles is confusingly similar to our client's long-standing 'BrandX' mark...").
- A Non-Negotiable Demand to Stop: Clearly stating the actions the infringer must take. This usually includes ceasing all use of the mark, transferring any infringing domain names, and destroying infringing marketing materials.
- A Firm Deadline for Response: We provide a deadline of 10 to 14 days. This creates a sense of urgency and establishes a clear timeline for the next steps should they fail to comply.
In many cases, a strong, well-drafted cease and desist letter from a law firm is enough to stop the infringement.
When the Letter Isn't Enough: Escalating Your Trademark Enforcement
In some cases, the infringer might believe they have a right to use the mark, or they may simply be betting that you won't take further action. If they ignore your letter or refuse to comply, you are at a crossroads. Fortunately, you have two primary venues for a formal legal challenge.
Solution 1: The Trademark Trial and Appeal Board (TTAB)
The Trademark Trial and Appeal Board (TTAB) is a special administrative body within the USPTO. This is the right venue if the infringer has either applied for or already received a federal trademark registration for the conflicting mark.
Your actions here are focused on their registration:
- File an Opposition: If they have applied for a mark but it has not yet registered, you file an opposition to block the registration from being granted.
- File a Petition for Cancellation: If they already have a registration, you file a petition to have it canceled. The Trademark Modernization Act of 2020 created new, faster mechanisms for canceling marks that were never actually used in commerce.
The TTAB only decides whether a trademark may be registered or must be canceled. It does not award you money damages or issue an injunction forcing the other party to stop using the mark in the marketplace.
Solution 2: Filing a Lawsuit in Federal Court
This involves filing a trademark infringement lawsuit under the primary federal trademark law, the Lanham Act. This is your path to challenge their right to the mark, stop their use of it, and recover financial damages.
A federal lawsuit achieves several outcomes:
- An Injunction: A court order that legally forces the infringer to stop all use of the mark. This is usually the primary goal.
- Monetary Damages: Depending on the specifics of the case, you may recover any profits the infringer made from using your mark, damages your business sustained due to the infringement, and in cases of willful infringement, even attorneys' fees.
Our practice at Gross Law Group focuses on evaluating which path is best suited for your specific situation. As attorneys who regularly handle civil litigation in federal court, we help you balance the potential costs, the required timeline, and your ultimate business objectives to determine the most strategic course of action.
Frequently Asked Questions About Protecting Your Trademark
Do I have to have a federally registered trademark to stop someone?
Not always. You have "common law" rights simply by using your brand in commerce in a specific geographic area. However, a federal registration provides much stronger, nationwide protection, acts as a public deterrent, and makes the enforcement process significantly easier and more effective.
What if the other business is in a completely different industry?
This generally lowers the "likelihood of confusion." For example, an "Apex" brand of pizza is unlikely to infringe on the "Apex" brand of construction equipment. However, for very famous marks, a claim of dilution might still be possible, where the concern is not confusion but the weakening of the famous mark's distinctiveness.
How much does it cost to pursue a trademark infringement claim?
The cost varies greatly. Sending a cease and desist letter is the least expensive option and frequently resolves the issue. A proceeding before the TTAB is typically less costly than a full federal lawsuit, which represents the most significant investment. We will discuss a budget and strategy that aligns with your business goals.
What if someone registered my business name as a domain name?
This could be a form of cybersquatting, which is registering a domain name in bad faith with the intent to profit from the goodwill of someone else's trademark. In addition to a lawsuit under the Anticybersquatting Consumer Protection Act (ACPA), you may use a faster and more cost-effective legal process called the Uniform Domain-Name Dispute-Resolution Policy (UDRP) to get the domain transferred to you.
What are the options for stopping someone overseas who is copying my brand and selling fakes online?
International enforcement is challenging, but it is not impossible. We might use platform-specific enforcement tools, like the Amazon Brand Registry or eBay's VeRO program, to have counterfeit listings removed. We also work with U.S. Customs and Border Protection to record your trademark and help stop infringing goods from entering the country at the border.
Don't Let Brand Theft Undermine Your Hard Work
You do not have to accept this situation. The law provides clear and powerful tools to protect what you have built. For a clear assessment of your trademark situation, call Gross Law Group today at (888) 858-1505.