Co-author Teri Karobonik contributed to this post*
There are many different types of legal disputes that you might encounter when you own intellectual property. Trademark law protects consumers from confusion regarding the origin or source of a product or service. Trademarks can end up being a significant asset for your business because over time, your customers will be able to identify with the company. Your branding choices can make or break your business, and your trademarks will help you build that brand.
This means that you as a business owner should know what kind of protection your trademarks get you, how to maintain and use your trademarks (and those of another company), and when you should take action against someone using your trademarks. Trademarks can be expensive to get, more expensive to protect, and disastrous to your business if you lose protection. Because of these factors, trademark over-enforcement has become a bit of an epidemic, but it doesn’t have to be that way!
In the second part of this multi-part series (see part 1 on handling copyright infringement here), we provide some key tips and action steps for enforcing your trademarks responsibly online.
First, make sure your trademark is actually infringed upon before taking any action
This might sound pretty basic, but sometimes when your trademark is reused it can actually be completely legal and non-infringing. A few common enforcement mistakes include:
- You granted a license to someone to use your trademark and they are using it according to the terms of that license. This is not trademark infringement, so you should not send that person a nasty letter because they are abiding by the license you gave them.
- Although the work, product, or service has a similar sounding name, it is not, in fact, using your trademark; it does not bear any relation to your trademark nor is any consumer likely to be confused by the use. For example, let’s say that you have a trademark on your San Diego, California ramen shop name, “Hipster Owl’s Ramen Shop,” and someone else has a band called “The Hipster Owls Take Brooklyn by Unicycle.” Although both trademarks are painfully hipster, it is highly unlikely that anyone would confuse a band with a ramen shop.
- Your trademark doesn’t appear anywhere, you just don’t like what is being said. This is not a trademark issue at all and should not be treated like one.
- The reuse is otherwise permissible under trademark law. Many times if the reuse is directly and accurately referring to your product or service, not simply using your mark or a portion of your mark to sell a competing product or service, it isn’t infringement (this is called “nominative” use). Also if someone else simply uses a word in your mark in its normal sense, that’s not infringement either. So if an organic fruit stand puts out a sign that says “Buy apples here,” that is not an infringement of the Apple Corporation’s trademarks (this is known as descriptive trademark fair use). If you’re unsure whether the use is permissible, you may want to reach out to an attorney for advice before acting.
Think about turning an infringing use into a new business partnership
Not everyone who reuses your trademark without permission is a counterfeiter. Often fans of company or brand will want to use the trademarked logo just outside the bound of permissible uses but might not know who to contact to get a proper license or even how to negotiate a license. Situations like this can be a great opportunity to consider entering into a new licensing agreement that you would have never entered into otherwise, keeping your company’s fan base happy and your wallet healthy.
Think about the business and PR ramifications
Not all infringements are created equal, nor do they merit the same response. Sometimes sending a polite email or even making a simple call will help resolve the situation faster than having your lawyer write the scariest letter they can.
Document the infringement and any communications with the other party
The moment you send a cease and desist letter, there is a very high likelihood that the problematic use of your trademark will disappear. While this may be what you want, if you need to escalate things later it will be hard to do so unless you have some actual evidence of the infringement, so be sure to document the infringement before you send anything. Similarly, you’ll want to keep a record of any written correspondence you have with the other party just in case you need it later in court or to help your attorney better understand the situation.
Be careful when hiring a company to enforce your rights online
There are many small companies purporting to help trademark owners crawl the internet to find, monetize and/or takedown infringing content. Not all of these companies are created equal. If you decide to use one of these services, do your research and particularly try to avoid companies who have a record of accidentally taking down their clients websites, products, or properly licensed works. Also be sure to ask if they have any method for screening probable permissible uses so you avoid the PR disasters mentioned above.
Don’t take drastic measures just because you think you’ll lose your trademark
Although as a trademark owner you do have to defend your trademark to keep it, there is a big difference between enforcing your trademark so it doesn’t become generic and trying to squash every potential use of your trademark. For example, you probably shouldn’t treat a notorious international counterfeiter the same way you would a fan who released a free knitting pattern containing one of your trademarks.
Don’t send a cease and desist letter because you don’t agree with what was said about your trademark
The right to prevent other people from saying critical or mean things about your good or service is not one of the rights granted by trademark law.
If you need to file a lawsuit, get an attorney...But keep in mind there are other means of dispute resolution
Trademark lawsuits are particularly complicated, so if you need to file a trademark lawsuit you should hire an experienced trademark litigator to assist you. That said, other forms of dispute resolution, such as mediation, can often be better, less expensive and more effective choices where none of the parties involved have the resources to litigate the matter in court.
Unfortunately, even if you take a responsible and measured approach to enforcement, you still may need to go to court and sue someone. Litigation can be ugly, uncertain, long, and complicated, so you’ll want to make sure you have an attorney to represent you and consider all other possible options before filing that lawsuit.
Moving Forward
Enforcing your rights is never a fun process, but hopefully this article has provided you with some helpful tips for enforcing your rights responsibly. This list is not exhaustive, and won’t turn you into an expert on handling trademark disputes, hopefully we’ve provided enough of the basics to help you start researching some of these concepts on your own. If you have additional questions, comments, or want us to do a more advanced article on this topic or a series for Forbes, feel free to contact us with your questions, comments, and suggestions.
If you want to get beyond the basics, you can check out our book Don’t Panic :) A Legal Guide (in plain english) for Small Businesses and Creative Professionals, which covers intellectual property and many other legal issues you may encounter in your business. You can also sign up for our free free IP 101 email course.
*Co-author Teri Karobonik is a member of the Product Counsel team at Twitter, where she supports a wide variety of products including Twitter's video products. She is @TeriKarobonik on Twitter. Prior to joining Twitter in 2016, Teri was a Staff Attorney at New Media Rights, and co-authored Don't Panic :) with Art Neill.
