San Diego Trademark Litigation Lawyers
Your intellectual property is often the backbone of your business, even if you don’t realize it. You’ve worked hard to develop a distinct and recognizable brand for your business. When customers see your name or your logo, they know that the job will get done right or they will receive a quality product. That kind of reputation takes time and effort to develop. However, when others use parts of your brand, it dilutes the message, which can lead to a loss of reputation and confusion. Ultimately, it will also negatively impact revenue.
When someone infringes your brand, you can take action to stop them. Defend your business with legal services and legal advice from the California trademark litigation attorneys at Trestle Law in San Diego County.
When Should I Register My Trademark?
Technically, you have legal rights to your trademark as soon as you develop it and start using it in commerce. Those rights are based on common law, and they are automatic. However, trademark registration provides an array of benefits to business owners that may not be available without going through the registration process. The following benefits are available to those who register their trademark at the federal level.
Public notification that you are using the trademark and it is registered
An automatic legal presumption that you are the holder of the trademark and are authorized to use it
Right to file for trademark protection in other countries
Ability to bring a lawsuit for trademark infringement in federal court, which has its own benefits (including a potential award of attorneys’ fees)
Ability to register the trademark with customs and border patrol, allowing them to seize any black or grey market goods
Ultimately, registration can save considerable time and money if a dispute arises related to your intellectual property. As a result, registration is especially critical for entrepreneurs, startups, and small business owners who might not have the resources to assert or defend a huge trademark lawsuit if it arises. Keep in mind that trademarks and service marks are effectively the same when it comes to legal protections, according to the U.S. Patent and Trademark Office.
Federal and State Trademark Registration
Trademark registration is available at both the federal level and within the State of California. Generally speaking, federal registration provides more rights than registration within California. For instance, once you have registered your trademark, the United States Patent and Trademark Office (USPTO) will refuse similar trademarks from being registered because they may be confused with your trademark. It essentially halts a trademark application in its tracks. This type of action can prevent significant disputes before someone ever puts a trademark into use. In fact, simply being listed in the USPTO database used for trademark searches can counteract conflict without you even realizing it.
In addition, if a federal trademark was in use before a state trademark, the federal trademark owner can stop it from being used — even if the state already registered the trademark. In contrast, if the state mark was registered first, it only provides protection within that particular state. Federal trademarks prevent use throughout the country.
What is Trademark Infringement?
Trademark infringement involves the use of another entity’s trademark in a way that could result in confusion or dilution. It shares many similarities with copyright infringement, but the concepts are different.
In many cases, intellectual property law will consider the degree to which there is a likelihood of confusion because of the unauthorized use of all or a portion of a brand. In California, the court will consider several factors to determine if there is a “likelihood of confusion.” These factors include:
Whether the goods and services are geographically located in proximity to one another
The relative strength of the trademark
Any evidence of actual confusion (from customers, vendors, etc.)
Use of specific marketing channels
The similarity of the marks used
Types of goods and services and degree of care that the purchaser might use to decide whether to buy a product or service
Likelihood of expansion of product lines
The other party’s intent in selecting the trademark
In some cases, there is deliberate fraud, which includes a calculated attempt to use a good brand name to confuse customers into purchasing goods or services associated with a different brand. Alternatively, some businesses or individuals inadvertently use a portion of a brand by mistake or because they did not check for trademarks before they started using a logo, phrase, or brand name.
With an increasingly nationwide and even global economy, trademark infringement is on the rise — roughly 3,500 trademark infringement lawsuits are filed annually in the United States. California has the highest number of intellectual property cases filed annually. Trademark infringement also costs United States businesses roughly $250 billion annually.
How Do I Make Sure Others Aren’t Using My Trademark?
Take Action to Protect Your Rights—Or Lose Them!
Although the USPTO provides protection to those who register their trademarks, their oversight is limited. The USPTO does not police trademarks. Instead, it is up to the individual trademark holders to assert their rights if trademark infringement occurs. If a trademark owner does not assert their rights, they may end up losing those trademark rights.
Essentially, if you do nothing to protect your trademarks, someone else may take them from you. Over time, the party that “borrowed” your trademark may even gain rights to use it in certain parts of the country. If several companies use the same trademark or similar trademarks, that weakens the overall mark, which may also undercut the original trademark owner’s rights. That means a trademark owner could lose their rights without ever filing a cancellation or making a disclaimer.
Do Periodic Searches on Your Own
Being proactive is one of the best ways to protect your trademark. Periodic searches online or in your local area can be beneficial. For instance, you may want to set up an alert with Google to notify you every time you see something online that involves your trademark, brand name, or even certain portions of your trademark.
Ask Your San Diego Trademark Lawyer to Establish a Trademark Watch
Your San Diego trademark attorney can also set up a trademark watch for you. This notification process will alert your lawyer if someone submits a trademark application that is similar to yours in any way.
The USPTO is supposed to reject any application that is similar to an already registered trademark. However, what you might consider similar and what the USPTO considers similar may not be the same. You can take action to block trademark registrations before the USPTO approves them in some circumstances. Usually, this action requires going through the Trademark Trial and Appeal Board (TTAB).
What Happens During Trademark Litigation?
Many trademark lawsuits start with a cease and desist letter. If that does not work, litigation is often a necessary next step.
A trademark infringement lawsuit asks a court to determine that unauthorized trademark usage violates someone else’s intellectual property rights. The court will examine the following claims to determine if these rights have been violated.
Likelihood of Confusion
Trademark law not only protects the trademark holder, but it also protects consumers. In fact, some would argue that trademark law’s primary goal and purpose is to protect consumers and deter unfair competition. In light of that goal, the court is often sensitive to any confusion a customer may experience when purchasing a good or service from a company. If there is a “likelihood of confusion” about a brand, the court is more likely to determine that trademark infringement has occurred.
The court will ask: “Will the average consumer in the relevant market be confused about the origin of this product or service?” To answer that question, the court will review the factors set out above. No single factor is more important than the other, but it is important to note that the court will review the factors from a consumer’s point of view.
Dilution
Another claim that a trademark holder could make is that the user is diluting a mark. That is, their use is weakening it because of overuse. These claims are only available if your brand is famous, recognizable, or distinctive.
Dilution claims often arise when a brand name is used for a product that has nothing to do with the original product, so there is no likelihood of confusion. For example, if a company called Amazon started producing and selling water bottles, it could dilute Amazon’s brand, even if there is little likelihood of confusion.
Tarnishment
Tarnishment occurs when the use of a trademark weakens its reputation for quality. Technically, it is another form of dilution. For example, if another company started making a product of low quality and associated it with your brand, that might tarnish your brand, even if that company’s product was unrelated to the products you produce.
Stand Against Theft with Trademark Litigation
You have worked diligently to develop your brand. Don’t let that work disappear by failing to assert your trademark rights. Talk to our San Diego trademark litigation law firm about your rights related to trademark infringement. Put our years of experience with trademark litigation, business law, trade secrets, copyright infringement, and more to work for you and your business. We serve San Diego and the surrounding areas, including Carlsbad, Del Mar, La Jolla, and many portions of Orange County. Contact Trestle Law today for a complimentary consultation to determine whether our team is the right fit for you.