Theft is horrible. When someone steals an object from you, it is upsetting, frustrating and can create a lot of work and hassle to recoup the loss. When someone steals your intellectual property the feelings are similar, and maybe even a bit more personal since they stole something that takes creativity, originality, time and effort to develop – especially if the property represents your brand. Unfortunately I experienced this first hand when someone recently took my business name and used it as their own. Thankfully, there are laws in place to prevent and stop this type of IP theft, and if you are familiar with them, you can prevent it from happening to you.
In order to protect your business mark be sure to become familiar with trademarking laws.
Trademark: a word, symbol, or phrase, used to identify a particular manufacturer or seller’s products and distinguish them from the products of another
Infringement: when one party uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers
How do you acquire rights for your mark? There are two ways to do this:
1 – Register your mark with the United States Patent and Trade Office
2 – Be the first to use the mark in commerce (Yes! You are protected even if NOT registered)
The first option costs money and time, but offers benefits like nationwide protection, the ability to bring a trademark infringement suit to federal court and the potential to recover damages and attorney fees.
The second option is free, easy and it offers you protection for areas in which you have established a reputation.
Consult an IP Attorney
Before doing anything on your own, consult with an IP Attorney to ensure you are in a position of strength. You don’t want to open yourself up to a legal battle you will lose. Most attorneys will offer you a free or low-fee consult. After that it can get expensive with fees ranging from $150 – 300/hr.
If the case is clear and you wish to proceed, make sure to follow the guidelines suggested by your Attorney. The first step may be a simple inquiry, or in a case of blatant theft, you may immediately send a cease and desist letter. This can either come from you or your Attorney. Before you begin the process, know how far you are willing to take the matter. Is your limit a few attorney exchanges or are you willing to go to court?
The infringer may be cooperative, defensive, confused, or hostile. There is no way to know until it happens. Chances are you will get a range of reactions as the process continues. No matter the reaction, don’t get pulled into a useless exchange of retorts. Ignore emotional reactions. Remember, this is business, not a playground. Take the high road, maintain your business composure and continue following the legal guidelines set out for you by your attorney.
I won’t go into the details of my recent incident, however, I can tell you the infringer used the exact same name as mine (which is a unique, made up word), maintained a similar logo AND sold similar items on the same e-commerce site. Given that I had started using my mark in commerce for over a year before this person did, my IP attorney confirmed that this was a clear-cut case of infringement and I was protected under common law. Following his advice, I was able to take the required steps to halt the infringement. Thankfully the infringer sought sound advice and promptly ceased using the name/logo. I did encounter a few un-businesslike actions and retorts along the way, but did not “play”. Bottom line is that this person knew they were in the wrong and took steps to remedy the issue.
I have since registered Sewplicity™ with the USTPO and will hopefully not have to defend it again any time soon.
Future Business Owners: Do due diligence and research unique names before opening. Check the USTPO database, state business registries and do a comprehensive internet search. You can even hire an Attorney to do a search for you. Don’t choose a name which is already in use, especially if it exists in your specific marketplace or sells similar products as you. If you do, you may be opening yourself up to future legal actions.
Current Business Owners: If you wish ultimate protection of your mark, register it with the USTPO. It costs a few hundred dollars (or more depending on classifications), takes a year or more to obtain, and offers you nationwide protection with benefits.
Once you decide to register, use the correct markings to indicate a claim of ownership. ™ for pending applications, ® for active ones.
Be diligent in choosing and maintaining your mark – who knows, you may be the next big brand name!