Earlier this month, I broke down the main concepts of trademark laws so that even a 5-year old could understand it. Then, I gave you a big picture view of the 5 steps you should take if you get accused of trademark infringement.
But what about when the tables are turned? What should you do when you see another business violating your trademark? For example, maybe someone is using an identical or similar business name.
This is a difficult situation for a variety of reasons. And it’s particularly problematic for creative small business owners. Why? Because they tend to be really nice people. And it’s natural for nice people to “feel bad” as they tell other (often struggling) business owners that they’re doing something wrong.
The good news is you don’t have to be a bully. But you do need to be a bodyguard.
Start with answering this question: what is your end game?
In most cases, you just want the other person to stop using your trademark. And you want to do this without taking the issue to court. It can cost about $325,000 to litigate a trademark dispute in court.
(Okay, sometimes it gets more sophisticated—like if you’re wanting to come to an agreement regarding shared use of the trademark. But let’s not make this more complicated than it needs to be.)
Think about it this way.
If someone came to you out of the blue and told you that you were doing something wrong and had to stop it, how would your instinct tell you to respond?
For a lot of us, we’d get anxious, stressed, and very defensive. Your first reaction would probably be to list off the reasons why you’re not doing anything wrong.
So, the question is, how do you approach the situation so that you get what you want—for them to stop using your trademark? How do reach out in such a way to minimize the other side getting defensive?
The answer: start out playing “good cop,” and slowly change into “bad cop” if they don’t cooperate. But, unlike most “bad cops,” never lose your cool.
Before you do anything else, make a record.
Things might get ugly. If they do, you want to have a clean record of what happened. Take screenshots or pictures of this other trademark.
Analyze their trademark.
Is their mark the exact same as yours? If not, how different is it? Are you selling similar things? Could one of your potential customers or clients get confused about the source of your products based on the similarity of these marks? If so, then it’s worth confronting the issue.
Do some research on their trademark. Have they registered it at the state, federal, or international level? Are they doing business in the same region as you? If the answer to either of these questions is yes, then you might have a strong case that they are legally infringing on your trademark. If you’re unsure or would like more guidance, consult an attorney.
Send your “good cop” message.
No attorney needed here. If you can find a good email, that’s ideal. No phone calls—again, you want everything in writing. In this message, you’re assuming that this was an honest mistake and that the other side will be cooperative. Be friendly. Introduce yourself, and kindly make them aware that you own you trademark.
If you have a registered trademark, even better. Be sure to mention that.
Make your ask. Ask them to remove and stop using the mark that infringes on your trademark. Again, be nice. You might be surprised by just how often this message is effective.
If that fails, send a warning.
Still no attorney needed. The tone of this message is more formal but still cooperative. Basically, let them know that if they don’t take action to stop the infringement, there will be consequences. Give them a deadline.
Try sending a DMCA takedown notice.
An attorney isn’t required here but might be helpful. The Digital Millennium Copyright Act, or DMCA, allows you to use a website platform (like Facebook, Instagram, Etsy, etc.) to remove items that violate intellectual property. As the name of the suggests, it’s really meant for copyrights only, not trademarks. But many websites have built their DMCA process so that you can also report trademark infringement. If you run a Google search for “DMCA” and the name of the platform where you see the infringement, one of the first results should take you to a form or set of directions to follow. Keep in mind that the other side can file a counter notice, so it’s not a guaranteed step.
Send a formal cease and desist letter.
Time to lawyer up. At this point, it’s worth putting together a strategy. Should you register the trademark before sending the letter? Should this letter come from you or be on a law firm’s letterhead? A trademark attorney can take a look at your situation and recommend accordingly.
Again, think bodyguard and not bully. You want them to stop infringing on your trademark. You don’t want them getting defensive and dragging this out. Or even worse, the other side could start shaming you on social media. So stick to the facts and your reasons for why there’s infringement. Even if you’re boiling on the inside, the tone of the cease and desist letter should be calm and collected.
Keep in mind that this is just general information.
It sucks to see someone infringing—or might be infringing—on a trademark you own. And there’s no one-size-fits all solution to get them to stop. Depending on your situation, it might be wise to bring an attorney on board early to strategize the best course of action. But I can’t stress this enough—your tone and mindset is crucial.
These are just steps. You can’t force the other side to do anything. Only a judge can do that. So, be nice. As the middle of seven children, I’ve learned that asking nicely is usually the best way to get what you want.