You’ve taken the necessary steps to properly register a trademark, but now someone is using it without your permission. This can have significant negative consequences for the success of your business and/or product. As a result, understanding the ways in which trademark rights can be protected is important to your business.
What is a Trademark?
Under federal law, a trademark is any word, name, symbol, or device, or any combination thereof used in commerce to identify or distinguish goods from those manufactured or sold by others. A service mark is the same as a trademark, but is used to distinguish services, as opposed to goods.
The ability to stop someone from using a trademark, or one that is so similar that it is confusing, depends on the following factors:
- Whether the trademark is being used by the other person (or business) for competing goods or services;
- The likelihood that consumers will be confused by the dual use of the trademark; and
- Whether the trademark is being used in the same part of the country or is being used for related goods or services (goods or services that will likely be noticed by the same consumers).
In order to prevent someone else from using the trademark, the trademark owner must be actively using the mark. In this context, “using” is defined as putting it to work in the marketplace to identify goods or services. However, this does not mean that the goods or services need to be actually sold. Rather, they only need to be offered to the public.
Under Pennsylvania law, the owner of a famous mark can obtain an injunction against another person who uses the mark if that use causes dilution of the distinctive quality of the mark. The following are some, but not all, of the factors the court considers when determining whether the mark is distinctive and famous:
- Duration and extent of the use of the mark in relation to the goods and services for which the mark is used;
- Duration and extent of advertising and publicity of the mark within Pennsylvania;
- The geographical extent of the trading area in which the mark is used;
- The degree of recognition of the mark in the trading areas and channels of trade used by the mark’s owner and the person against whom the injunction is sought; and
- Nature and extent of the use of the same or similar marks by third parties.
The first step in stopping unwanted use of a trademark is to send a cease and desist letter to the infringing party that demands them to stop using the mark. If the infringing party does not stop using the mark, the next step is to file a lawsuit. While the main objective of these actions is to stop the use of the trademark, in some cases, it is possible to receive money damages based on the loss due to the unauthorized use. In order to receive money damages, it must be proven that the use was likely to confuse consumers and the business suffered economically due to that use.
Small Business Law Help
For more information about trademarks, or any other intellectual property, speak with experienced attorney at the Philadelphia Small Business Law Center. We look forward to providing our knowledge and experience to help your business succeed.