If you or your business are the owner of a trademark, you may encounter a competitor or another business attempting to use your same trademark, or at least one that is similar to yours, to attach to their own image. It is important to know what kind of protection you and your trademark are entitled to, as well as what legal recourse you may pursue in the case you do find yourself in a situation where your trademark is no longer exclusive to you.
The Trademark Act of 1946, otherwise known as the Lanham Act, was designed specifically for this issue, establishing federal trademark protection and placing certain rules in place for the use of trademarks and their registration. In the case you would like to register a trademark for protection under the Lanham Act with the United States Patent and Trademark Office, the main requirement is that the trademark must be used in commerce.
The trademark can be registered either in the Trademark Office’s principal register or the supplemental register – the principal register affords more protection, but the trademark must be distinctive, while the supplemental register affords less protection, but the trademark does not have to be distinctive. For a trademark to be distinctive, it must have acquired some kind of association with the source of the good or service in the mind of the consumer, being distinctive from other trademarks and being traceable and recognizable back to the original source.
If you have registered your trademark in either the Trademark Office’s principal register or supplemental register and find that a competitor or another business is using either exactly your trademark or a trademark that is similar to yours, the Lanham Act affords you the ability to sue the other user of the trademark for “unauthorized use.” In order to establish a trademark infringement claim under the Lanham Act, you would have to prove that:
- You have a valid and legally protectible mark – You have taken the necessary steps to register your trademark either in the principal or supplemental register, as required by the Lanham Act.
- You own the mark – You are the person who registered your trademark with the Trademark Office and it is associated with your name or business.
- The other party’s use of the mark to associate with their goods or services causes a likelihood of confusion with your trademark – A person who comes across the other party’s use of their trademark might confuse theirs with yours, or yours with theirs.
NOTE: The other party’s use trademark does not have to be exactly like your trademark, line for line. All the other trademark needs is to cause a likelihood of confusion with your trademark. In the case that your trademark comes to signify something unique, singular, or particular that the public recognizes as yours or traceable back to you as the source, someone else’s use of a trademark that is even relatively similar to yours is enough for you to claim under the Lanham Act that the use of their trademark dilutes the meaning or uniqueness attached to your trademark.
The most important thing to remember when you find yourself in a situation where someone else might be using your trademark or even using one that is confusingly similar to yours is that the first thing to do is seek legal assistance. Consult with an attorney immediately if you would like to file a trademark with the Trademark Office for protection, or if you believe you are entitled to legal relief for someone else’s unauthorized use of your trademark.