A trademark is a word, phrase, symbol, design, or combination that identifies and distinguishes the source of one set of goods from another.Nike's "Just Do It" slogan and the shape of a Coca Cola bottle are examples of trademarks.Due to the amount of goods sold and distributed over the internet, Trademarks are now visible online.If you have an online presence, companies might view your website and dispute your use of potential trademarks under the theory that you are violating their intellectual property.Each type of dispute requires a specific defense tactic.There are many examples of trademark disputes.You could challenge the trademark at the center of your dispute if you are fighting against one of these actions.
Step 1: Go read the letter.
A cease and desist letter is sent through the mail or as an email and states that you need to stop using someone else's trademark.Take it seriously if you receive one of these letters.The individual or company that thinks you are violating their trademark should request a response from you in the letter.The cease and desist letter is often used as a starting point for litigation.You have a chance to resolve the dispute before it gets more serious.
Step 2: Don't hesitate to consult an attorney.
Talk with a qualified intellectual property attorney before you respond to the letter.The attorney can help you analyze the strength of the other party's claims and suggest an appropriate response.There will be attorneys who specialize in trademarks.Use your state bar's lawyer referral service to find one.In California, you can call the state bar and ask questions about your legal issue.A number of qualified attorneys in your area will be sent to you once complete.Ask potential attorneys specific questions about your case when you meet them.If their usual clients are sued, be sure to ask.You want an attorney who knows how to defend against claims of intellectual property theft.You should ask about fees.While most attorneys charge for their services, you may be able to find one that will offer free or reduced cost services.The number of pro bono services has recently been increased by the US Patent and Trademark Office.
Step 3: Ask accordingly.
You can respond to the letter in a number of different ways.If you feel like you're not violating any trademark, you might deny it.If you do so, you may antagonize the other party, which could lead to litigation.You could ask for more information about their claim.You can ask for more specific evidence regarding why he or she thinks you are violating, as well as inquire about their dates of first use, whether their trademark is federally registered, and where, geographically, their mark is in.The questions will help you understand the dispute.
Step 4: It's up to you to do nothing.
There are letters that scare people like you.The person sending the letter is hoping that you will stop using the mark or start paying for it.You might not respond at all if you don't find any merit in the letter you were sent.Not responding may have legal ramifications in the future.If the court finds you liable for violating the law, they may order you to pay more damages to the other party.
Step 5: Negotiating with the trademark owner is important.
If you don't think you're violating someone else's trademark, but you want to respond, you can try to get them to send a letter stating you are not.You need to give the other party proof that your mark is different or that he or she doesn't have protection over it.You should ask the other party to enter into a written agreement if you can do this.Many letters may arise from a trademark owner's overzealous efforts to protect their mark from even the smallest encroachment upon what they believe to be the scope of their rights.If they are satisfied with your explanation, a simple reply may be all they need to resolve the matter.If you find that you are violating someone's trademark, you might consider negotiating.You could try to get a license to use the other person's trademark on mutually agreeable terms.You will usually pay a fee for the ability to use the other person's mark if you agree to a license.You may be able to resolve a dispute by agreeing to insert a "disclaimer" in some of your advertising, where the other party has claimed your use creates a likelihood of confusion.For instance, if your brand is "Jon-Bilt" for shop and farm equipment and another company sells kitchen equipment under the Johnbilt brand, you might agree to include words to the effect.This will help you transition to a more distinctive brand.
Step 6: Wait for service.
A trademark lawsuit begins when a complaint is filed with a court accusing you of violating their trademark.If you are named as a party in the complaint, you will have to serve a summons on the other party.You are required to respond to the lawsuit within a certain period of time.If you are served with a complaint and summons, read through them and act quickly.
Step 7: An attorney is a must.
As soon as you are served with a lawsuit, contact a lawyer.Contact your state bar association's lawyer referral service if you don't know one.Contact information for a number of qualified attorneys will be given to you after you answer some questions about your dispute.You should meet with an attorney as soon as possible.You only have a limited amount of time to respond.You will be short on time, so make sure you choose a lawyer who can handle your case with success.Make sure you ask about the fees as well.
Step 8: Put an answer in.
If you are representing yourself in the lawsuit, you will have to file a formal response.A "answer" is the one response you can file.Each paragraph of the complaint will be responded to by your answer.You might say that you don't have enough information to answer specific allegations.If the complaint wrongly names you as the owner of the brand, you would want to deny such ownership and deny any legal liability in your reply.It is possible to file a "cross complaint" for a declaratory judgment that you are not violating their brand.
Step 9: The defense of Assert Rule 12(b).
If the circumstances allow, you can file a motion with the court to argue against the claims being made against you.Before you file your answer, certain defenses need to be included.You can waive your right to ever assert them again if you don't include certain defenses.Rule 12(b) of the Federal Rules of Civil Procedure states that if the court does not have personal jurisdiction over you or subject matter jurisdiction, you may have a defense.The lawsuit should be dismissed because of insufficient service of process, which states that you were not made aware of the lawsuit.The suit should be dismissed if there is a failure to state a claim.Rule 12(b) is a defense that may be used if there is no "standing" to file a claim.
Step 10: The other party needs to be served.
When your answer or motion is drafted, you will file it with the court and serve it on the other party.You need to hire a third-party to serve you, usually the sheriff's office.You will receive a proof of service that will need to be filed with the court.
Step 11: Take a part in discovering.
If the judge does not dismiss your suit on a 12(b) motion, you will most likely move into the discovery phase of litigation.During discovery, you will have the chance to collect and exchange information with the other party.You will be able to gather facts, speak with witnesses, and find out what the other side is going to say at trial.Informal discovery includes talking with witnesses, gathering publicly available documents, and taking photographs.Interrogatories, which are written questions, will have to be answered by both parties.These questions can be used in court.Informal in-person interviews with parties and witnesses are called deposits.Answers can be used in court.Requests for documents are formal requests to the other party.Emails, text messages, or internal memos could be included.Subpoenas are court orders requiring someone to do something.
Step 12: Determine the strength of your case.
You should have a good idea of your defense after discovery.In a trademark case, you have to prove that you own a valid mark, that it has priority over you, and that your mark is likely to cause confusion with consumers.If the trademark is federal registered, it is presumed that the person who owns it has the exclusive right to use it.The presumptions can be rebutted.If the use of your mark will likely confuse consumers, your case will usually come down to that.A court will look at the evidence to determine if the two marks are the same.You can file a motion for summary judgment if you feel you can win the case.Settlement is possible if you think your case is weak.
Step 13: A motion for summary judgment is filed.
You can resolve the case before it ever gets to trial by filing a motion for summary judgment.The motion is usually filed after the discovery is complete.You must show the court through evidence and affidavits that there is no genuine issue of material fact and that you are entitled to judgment as a matter of law.All of the evidence you provide will be reviewed by the judge.The judge will rule in your favor if he or she thinks there is no way the case will be won.litigation will continue if your motion is denied because the court believes there are facts that will allow the person to win.
Step 14: It's time to attempt to settle.
It's a good idea to try to settle your case as a last ditch effort to avoid trial.Settlement talks can be informal or formal.Good faith conversations are the only way to reach a resolution.The strengths of your case can be discussed during informal talks.Discuss what you want out of the case, which is most likely to be able to use the mark in dispute.In order to reach a resolution, try to find common ground.If informal talks don't work, try mediation.A neutral third-party will sit in on your talks.The third-party will try to help you come up with a solution.A neutral third-party can listen to evidence and act as a judge if all else fails.The neutral third-party will issue a suggested settlement based on what he or she heard during the sessions.
Step 15: You should go to trial.
You will likely go to trial if you can't settle your case.You and the other party will be able to poke holes in each other's case during the trial.The judge will decide if you violate a trademark by analyzing the arguments and evidence.You will be able to use the mark in dispute if you win at trial.If the person felt there was a mistake of law, they could appeal the decision.If you feel that the judge made a mistake in your case, you can appeal.
Step 16: Search for records from the United States Patent and Trademark Office.
You might consider taking an offensive approach to protect your mark, in addition to defending against actions brought against you.If you want to learn about the other person's possible trademark, you should start by searching the USPTO database.The other person's trademark can be found using the Trademark Electronic Search System (TESS).The Trademark Status and Document Retrieval (TSDR) system can be used to access records if you know the person's application serial number.The use of TESS and TSDR is complicated.There are online lessons that can help you in the search process.It does not mean that someone doesn't have trademark rights if their mark has not been registered.Common law rights may still be held by the trademark owner.When someone uses a mark for goods or services, they have these rights.Section 43(a) of the federal Lanham Act gives the owners statutory rights to prevent others from "passing off" other goods under a confusingly similar brand.Similar actions may be brought under state laws.
Step 17: Evaluate an individual's trademark rights.
If you find federal registration or application records, analyze them to determine the type of mark he or she has, the extent of their trademark rights, and if you think you are violating their rights.If you feel confident that you aren't violating someone's trademark, then you should take appropriate steps to stop the dispute.
Step 18: You can contest an application for trademark.
The Trademark Trial and Appeal Board is an administrative tribunal of the United States Patent and Trademark Office.They are tasked with hearing and deciding trademark registration cases.They don't have the power to hear unfair competition cases.You can file an opposition to prevent the issuance of a trademark if you think someone's application for federal trademark registration should not be granted.You have 30 days to file the opposition after the application is published.There may be pleadings, discovery, motions, settlements, and trials if the TTAB conducts proceedings in a similar manner to federal courts.Contact the TTAB if you want to request a proceeding.
Step 19: Challenge the trademark registration.
The TTAB can also hear cancellation proceedings.If you want an existing registration to be canceled, you have to show that you are damaged by the registration.You need to prepare to file pleadings, take part in discovery, draft motions, attempt to settle, and go to trial if these proceedings look like federal court proceedings.Contact the TTAB if you want to request a proceeding.
Step 20: There is a lawsuit.
If you don't think taking part in administrative proceedings will solve your problem, you may need to file a lawsuit.If you want a court to rule that your use of a mark does not violate trademark law, you can file a declaratory judgment lawsuit.In order to challenge the validity of the other party's trademark, you can assert a number of affirmative defenses or counterclaims against them.