What should I do if someone is infringing my mark?
Minneapolis trademark attorney Jennifer Debrow discusses remedies for trademark infringement.
Email: [email protected]
Phone: (612) 632-3357
So the most important thing to do when you think that someone might be infringing your mark is to investigate before you contact them. This is critical. As I mentioned before, trademark rights in the U.S. are based on use, not federal registration, and someone who might have been using the mark longer than you could be a senior user, so before we ever send a letter to someone alleging trademark infringement, we investigate as much as we need to, to confirm that they’re a junior user and not a senior user, because the last thing you wanna do is notify someone that they’re an infringer and find out that, in fact, you are the infringer. So that’s the first thing we do, is an investigation.
Another option, when you do find an infringement, is that you have to think about what your goals are. Do you want this person to stop using the mark entirely, which may be the case, if it’s a serious business conflict? You know, they might be – consumers are confused and they might be buying their product instead of your product, but a lotta times in trademark law, it’s not that direct an issue, and so you can think about, “Could I let this person coexist with me? Is it possible that they could use their mark and I could just restrict their rights somehow that would make it better for me long-term?” And a lot of trademark disputes are solved with what we call “coexistence agreements,” where the parties agree to certain restrictions that, you know, “You can use the – the mark can only look a certain way, or you can only use it with certain goods and services,” or things like that to try and allow both parties to continue to use the mark. So I think when you see an infringer, think through those issues as you start working with a lawyer to enforce your rights.