I recently shared a link to a New York Times article on a t-shirt company that was being very publicly “chastised” for creating and successfully marketing t-shirts with the text from some other gentleman’s twitter feed. Several clients have reached out to me since then wondering about their own trademarks and how to protect them. Every day, legally protected trademarks are used without authorization by a company's competitors and customers. The trademark owner has every right to want to protect their creative work.
Trademark infringement is a serious legal and business concern in today's marketplace. Brand names, logos, domain names, and slogans tied to successful businesses are now all on the internet and readily copied and used by others with a simple cut and paste. This not only causes confusion in the marketplace but also dilutes the distinctiveness of the mark and the program or merchandise that the mark represents.
Taking action to enforce trademark rights is now a cost of doing business, and it is required to maintain the integrity of the trademark and company that it represents. Trademarks receive legal protection primarily to prevent buyers from being confused about the source of goods or services. If a company that owns a trademark fails to control who uses the mark their underlying legal protection collapses. As a practical matter, the greater the use of the mark on related goods or services by persons other than the trademark owner, the less effective the mark becomes.
Creating and managing an enforcement program is vital to protecting these valuable intangible assets. The most obvious strategy is to send a C&D letter and, then if a satisfactory result is not obtained, resort to litigation.
A typical C&D letter will delineate the trademark owned; explain why the recipient is infringing on that right; and set forth legal claims for trademark infringement (such as: confusion in the marketplace, unfair competition, cybersquatting or dilution under federal and state laws). The letter concludes by requiring that the infringer send written assurances that the infringement will cease, under threat of further legal action.
The greatest advantage of sending C&D letters is that it can be a relatively low-cost way to resolve trademark infringements. Infringers often recognize that it is in their own best interest to stop the offending activity and cooperate with the trademark owner to resolve the matter amicably. When infringement is questionable, a C&D may be the first step toward negotiating an agreement that keeps the dispute out of court.
For cases that require actual litigation, the C&D is an important first step. The C&D establishes actual notice of the infringement claim and may give rise to a claim of intentional infringement if the activity continues after receipt of the letter. Courts often look to whether the parties attempted to resolve the matter before asking for judicial intervention, and the C&D letter is evidence of such an attempt.
Another way of dealing with a trademark issue may be to send some kind of modified C&D letter. In some cases, a less legalistic or formal communication may better address the situation and avoid hard feelings and negative public perception.
If the trademark infringement is not cut and dry, a C&D letter might not always be advised. The infringer might go to court first, and seek a declaratory judgment that it is not infringing on the rights of the trademark owner, and that the trademark set forth in the C&D letter is invalid or otherwise unenforceable. Thus, the goal of the C&D, to cost effectively stop the infringing activity, is thwarted.
Another concern to consider before sending a C&D is to make sure that the recipient of the letter does not have superior rights in the mark. Sometimes when two parties are using the same or similar trademarks, it is not obvious who has better rights. This is true particularly when neither party has a federal trademark registration that carries a presumption of validity as to ownership of rights. In such a case, common law trademark rights must be analyzed to determine who has a priority of use. It is vital to avoid sending a C&D until these issues are sorted out to avoid the recipient of a C&D letter replying with proof of a better right to the mark.
If you would like more information in either applying for a trademark registration or enforcing your ideas or company identity give me a call or shoot me an email.