What is a Trademark?

A trademark is a distinct sign, design, or expression that identifies the products or services of a particular source and publicly distinguishes them from others. Through trademark litigation, our attorneys help resolve disputes over the infringement, validity, or ownership of various trademarks.

You want people to easily recognize your brand. Gaining a loyal audience takes a great deal of work, as does creating the branding that represents your business. When people associate certain identifiers with your business, such as its colors or logo, you can’t underestimate the value these assets have in a competitive market. 

However, if you don’t protect them, other individuals or businesses may try to capitalize on them.

At Emerson Thomson Bennett, we know how important trademarks are for a business’s identity. Protecting your business’s identity is essential to help it stand out and succeed against the competition. Our trademark litigation attorneys will work with you to protect this vital Intellectual Property (IP).

Trademark Availability Search/Opinion

The first step of the process is to conduct a trademark availability search. We have access to a trademark search database that encompasses registered and pending trademarks from the United States and around the world. 

We will review your trademark in light of the existing trademarks, which enables us to determine whether we believe your trademark can be registered. Although a trademark availability search is not a required step, we believe it is a valuable one and highly recommend it.

Trademark Application (Word, Word/Design, Logo, Color, Trade Dress)

A trademark application can be filed for a word, a word combined with a design/logo, a design/logo by itself, a color scheme, a trade dress, and distinctive sounds. A trademark application can either be filed as a use-based application (if the trademark is currently being used in interstate commerce) or as an intent-to-use application (if the applicant has a bona fide intent to use the trademark in the future).

Madrid Protocol

The Madrid system for the international registration of marks (the Madrid system), established in 1891, functions under the Madrid Agreement (1891) and the Madrid Protocol (1989). It is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. 

The Madrid system offers a trademark owner the possibility to have their trademark protected in several countries by filing one application directly with their own national or regional trademark office. A registered international mark is equivalent to a registration of the same mark in each of the countries designated by the applicant. If the trademark office of a designated country does not refuse protection within a specified period, the protection of the mark is the same as if it had been registered by that office.

International Trademark

To protect a trademark outside the United States, trademark applications should be filed in the relevant countries. We have connections with colleagues in most countries to aid in filing foreign trademark applications.

U.S Filing from Outside the U.S

Our firm is well-situated to aid non-U.S. counsel in filing applications in the U.S. directly from non-U.S. applications or through the Madrid Protocol. We are interested in establishing reciprocal relationships with non-U.S. firms.

Infringement/Non-infringement Opinion

Trademark infringement occurs when a third party uses another’s trademark (or a confusingly similar variation thereof), leading to confusion or the likelihood of confusion among the relevant consumer group. We can analyze a trademark situation to determine whether there is a likelihood of confusion. Trademark infringement also encompasses Lanham Act violations, passing off, dilution, blurring, tarnishment, and unfair competition.

Trademark Litigation

At Emerson Thomson Bennett, our trademark litigation practice focuses on protecting our client’s intellectual property rights and includes patents, trademarks, trade secrets, unfair competition, copyrights, and Internet and domain name disputes. 

Our trademark attorneys in Ohio represent a wide range of local companies, individuals, plaintiffs, and defendants.

Trademark Litigation FAQs

Q1. What should you do if someone steals your trademark?

If someone steals your trademark, the first step is to gather evidence of your trademark’s use and the infringement. You’ll need to document the infringement through evidence such as marketing materials, sales records, and registration certificates. 

Next, consult a trademark litigation lawyer to evaluate the situation and advise on the best course of action. Often, the attorney will send a cease and desist letter to the infringer, demanding they stop using your trademark.

If the infringer does not comply, you may need to escalate the matter by filing a complaint with the United States Patent and Trademark Office (USPTO) or initiating legal action in court. This process seeks to resolve the dispute and enforce your trademark rights. 

Successful trademark litigation can result in remedies such as injunctions to stop further infringement, monetary damages, and recovery of legal costs. Taking swift action is crucial to protect your brand and maintain the integrity of your trademark.

If you think someone is abusing or using your trademark without permission, contact our trademark attorneys in Ohio today.

Q2. Can someone sue me for my trademark? 

Yes, someone can sue you for your trademark if they believe it infringes on their existing trademark rights. This typically occurs if your trademark is similar to another party’s trademark and is used in a way that could confuse consumers regarding the source of the products or services. 

If you are sued, the court will examine factors such as the similarity of the trademarks, the similarity of the goods or services, and the likelihood of consumer confusion. If the court finds in favor of the plaintiff, you may be required to cease using the trademark, pay damages, and cover legal costs. 

To avoid such disputes, we highly recommend conducting thorough searches and seeking legal advice from a trademark litigation lawyer upfront.

Q3. What are the four defenses to a trademark infringement claim?

In a trademark infringement claim, four potential defenses are commonly used: 

  1. Fair Use: This defense argues that the use of the trademark was descriptive and necessary to label the goods or services, rather than to identify their source. For example, this would include using a term in its ordinary, descriptive sense rather than as a brand name.
  2. Non-Commercial Use: This defense applies if the trademark was used for non-commercial purposes, such as in news reporting, commentary, or parody, where the use is not intended to cause confusion or profit from the trademark.
  3. Lack of Likelihood of Confusion: The defendant can argue that there is no likelihood of confusion between the two trademarks because they are sufficiently different in appearance, sound, meaning, or the context in which they are used, reducing the risk that consumers will be misled.
  4. Prior Use: If the defendant can prove they were using the trademark in commerce before the plaintiff’s trademark was registered or used, this defense establishes their prior rights to the trademark, often under the “first use” rule in common law jurisdictions.

If you have been accused of trademark infringement, it’s best to consult a trademark litigation lawyer immediately to determine if any of these defenses apply to your situation.

Q4. How much does trademark litigation cost?

The cost of trademark litigation can vary widely, often ranging from tens of thousands to several hundred thousand dollars. This includes expenses such as filing fees, discovery costs, expert witness fees, and the hourly rates of your trademark litigation lawyer. 

There are many factors that can influence the total cost – including the complexity of the case, the duration of the litigation, and the specific legal strategies employed. It’s essential to discuss potential costs and fee structures with your lawyer to budget appropriately for the legal process.

To learn what your trademark litigation case might cost, reach out to our trademark attorneys in Ohio. We’ll assess your circumstances and provide you with a personalized estimate. 

Q5. What are the punishments for trademark infringement? 

The punishments for trademark infringement can include several legal ramifications and penalties:

  1. Injunctions: Courts may issue injunctions to stop the infringing party from using the trademark, preventing further unauthorized use.
  2. Monetary Damages: The infringer may be required to pay damages to the trademark owner, which can include the owner’s lost profits, the infringer’s profits from using the mark, and potentially treble damages (three times the actual damages) in cases of willful infringement.
  3. Legal Fees: The infringer may be ordered to pay the trademark owner’s attorney fees and court costs.
  4. Seizure of Goods: In some cases, the court may order the seizure and destruction of infringing goods and materials.

These punishments are designed to compensate the trademark owner for their losses and to deter future infringement.

Protect Your Business’s Identity with Our Trademark Attorneys in Ohio 

Businesses of all sizes and in every industry need a strong brand identity today if they want to be remembered and recognized. Such important IP requires only the best protection. 

At Emerson Thomson Bennett, our trademark litigation team is dedicated to protecting the IP of individuals and businesses. We can help ensure that you are the only one who can benefit from your trademarks. Contact our trademark litigation attorneys today for more information.

John Skeriotis

Partner – Litigation Practice Chair

John Skeriotis

Areas of Practice

Intellectual Property, Patent, Trademarks, Copyright, Internet Law, Litigation, Licensing

Email
jms@etblaw.com
Matt Wilson

Matt Wilson

Phone:

330-434-9999

Fax:

330-434-8888

CONTACT US TODAY

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