If you think that someone may be infringing on your trademark, then you should consult with your legal advisor as to the best course of action. Quite often, a ‘cease-and-desist’ letter will be sufficient. This is a letter, usually from a lawyer, that advises the infringing party to cease using the trademark immediately. If this does not achieve the desired result, then you may have to take further action, which could include a legal action for trademark infringement. Generally, it is far better to catch this type of problem early on, when the cost of changing the mark for the infringing party will be lower. If they have already invested a considerable sum in developing and marketing the infringing trademark they are more likely to put up more resistance, which can lead to an expensive fight.
If you think that your trademark may be infringed by a pending registration application, it is important to file an Opposition in a timely fashion. In Canada, this Opposition period is open for 2 months and it is the best opportunity you are likely to have to prevent the registration of a conflicting mark. Please note that since the trademark registry is a public record, it is assumed that you are aware of it and of applications being made for trademark registration.
Factors to Consider About Trademark Infringement
In dealing with a possible infringement of your trademark, many factors have to considered, including:
Registered or Unregistered Trademarks?
The rights and remedies for a registered trademark owner are usually much stronger. But even if your mark isn’t registered, you may still have common-law rights in the area over which your reputation and goodwill extend.Has There Been An Infringement?
The basic test the courts use is whether an ordinary consumer would, as a matter of first impression, be confused.Negotiations
What are the chances that the entire matter can be sorted out by friendly negotiation and agreement? This often involves undertakings not to engage in certain activities or to stay out of certain geographic areas.
What To Do
If you have on reasonable grounds concluded that your trademark is being infringed, your choices basically fall into two categories:
1) Do Nothing
From a legal point of view, if you fail to take reasonable steps to monitor, protect and enforce your trademark rights then there’s a chance that you could lose them. That’s the main problem with simply ignoring the situation, especially since it has somehow come to your attention. From a practical point of view, it’s a big marketplace out there today, especially given the internet. It doesn’t seem reasonable to expect a small business to spend the time and money to monitor the whole world. In other words, don’t go out particularly looking for trouble, but if something does come to your attention, you should probably deal with it.
2) Send a Cease & Desist Letter
Once you’ve decided to do something, the next step is usually sending a “Cease & Desist” letter. The purpose of this letter to put the other party on notice that you consider them to be infringing your trademark, and they must stop. If they don’t, and it turns out that they were infringing, then this is the time from which they are liable in some kinds of damages to you. It’s an important letter to send if your trademark is truly being infringed, or your rights might be jeopardized.
2a) Send the Letter Yourself
The best case scenario is that you send a nice polite email to the owner of a trademark that is similar to yours, and they respond in a similar business. You email back and forth a few times and work everything out. Sometimes things work out just fine this way, and sometimes they don’t.
2b) Hire Someone Else To Deal With It
You can hire a trademark lawyer to advise if there really is an infringement and what to do about it. We’ve also found that Cease and Desist letters tend to have more of an impact if sent under law firm stationary.
Our firm, Smuglers LLP, has years of experience helping small business through these issues as quickly and inexpensively as possible. If you think someone may be infringing your trademark you can give us the details by email, fax or mail. We’ll get back to you with a price quote on our charge to provide an opinion and write a ‘Cease and Desist’ letter. There’s no charge for the price quote.