Trademarks are something that if not well researched, may trip up an advisor just as his or her business hits its stride. In this second of our series on trademark law, we address a few basic rules of protection, and explain how to fight a claim that your business has encroached on trademark rights.
My partner and trademark expert Craig Hilliard says that one of the most important principles of trademark law is that your rights arise upon your first use of the mark, and not upon some step to formalize protection, such as registration with the U.S. Patent & Trademark Office. Consequently, even if you have yet to secure a registration (or decide not to pursue one at all), you still have rights if another firm tries to use it.
Therefore, once you start using the trademark to describe your client services, periodically monitor the internet and other public sources of information — at least quarterly — to determine if someone else has encroached on your rights.
This is important, for if you “sleep on your rights” you may unwittingly forfeit your ability to ask a court to use its equitable power to force an infringer to stop using the confusingly similar name or design. Because damages are somewhat difficult to prove and recover in a trademark lawsuit, this power to compel the infringer to stop its use of your trademark (known as an “injunction”) is often the most powerful arrow in the quiver.
What if you find someone is using your trademark or logo or something very similar to it? Craig advises to assess your options, which include: 1) sending a “cease and desist” letter to the other firm, demanding that it stop its use and (in some instances) that it account to you for your losses; 2) filing a lawsuit in an appropriate federal or state court; and 3) forgoing any formal action.
These are not mutually exclusive options. Often, you can opt to advise the other firm in a “cease and desist” letter of your trademark rights, and then file a lawsuit only if they refuse to favorably respond to that letter. In other instances, the damage to your rights may be significant enough that you may choose to immediately file a lawsuit.
Notifying the other firm in a letter of your rights in your trademark is important because you can later rely on that letter to demonstrate that the other firm was put on notice and therefore, it should be liable for enhanced remedies for the “willful” infringement of your mark.