Is Someone Using Your Trademark?

By Joseph Jaap, Copyright and Trademark Attorney
Barron Peck Bennie & Schlemmer Co. LPA

A Trademark or Service mark can be one of the most valuable assets that a business owns. If not properly protected, or if misused by its owner, the value of that asset can be lost. Proper protection can include registration with the US Patent and Trademark Office (USPTO), as one of our clients was pleased to learn.

Various legal provisions protect the name under which a company does business or sells its products or services. But that protection can be augmented by registering the name as a trademark or service mark with the USPTO or with the various states in the name is used.

A client had registered its name as a service mark with the USPTO a few years ago. It recently learned that another company was offering the same services using the same as our client’s registered mark. A cease and desist letter to the infringer brought a quick apology and a termination of the infringing use, just as the trademark laws provide. Without that prior USPTO registration, time-consuming and expensive litigation could have been required to terminate the infringing use. And without a prior registration, depending on the circumstances, it might not have been possible to terminate such an infringing use at all.

Registration of a trademark or service mark with the USPTO gives the owner significant legal remedies against an infringer, including the ability to collect tripled monetary damages and to have the infringer pay the owner’s legal and litigation fees. The threat of that double remedy is usually sufficient to persuade an infringer to promptly cease its use of the infringing mark.

Likewise, you don’t want to be an unintentional infringer, possibly liable for tripled damages. Before selecting a new name for a business, product, or service, contact your BPBS attorney to be sure you won’t run into a problem and to register it properly. If you have questions about trademarks, service marks, and how to protect them, call BPBS attorney Joseph Jaap at 721-1350 to review your options for how best to protect your marks.

Published June, 2013