As the owner of a trademark, when you can stop others from using your trademark, or a confusingly similar one, depends on such factors as:
- whether the trademark is being used on competing goods or services (goods or services compete if the sale of one is likely to affect the sale of the other)
- whether consumers would likely be confused by the dual use of the trademark, and
- whether the trademark is being used in the same part of the country or is being used on related goods (goods that will likely be noticed by the same customers, even if they don't compete with each other).
In addition, under federal (and some state) laws known as dilution statutes, you may go to court to prevent your trademark from being used by someone else if your mark is famous and the other company's use would dilute the mark's strength -- that is, weaken its reputation for quality (called tarnishment) or render it common through overuse in different contexts (called weakening). The key element is that your mark is famous -- that is, distinctive and recognizable.
Dilution statutes apply even if there is no way customers would be likely to confuse the source of the goods or services with those sold by the owner of the famous mark. For instance, consumers might not think that Microsoft toilet paper is associated with Microsoft, the software company, but the makers of Microsoft toilet paper could still be forced to choose another name under federal dilution law.
Using a Trademark Actively
A business that claims to own a trademark cannot stop others from using the same or a similar trademark unless it is actively using the trademark.
In trademark law, "using" a trademark means putting it to work in the marketplace to identify goods or services. This doesn't mean that the product or service actually has to be sold, as long as it is legitimately offered to the public under the trademark in question.
For example, Robert creates a website where he offers his new invention -- a humane mousetrap -- for sale under the trademark "MiceFree". Even if Robert doesn't sell any traps, he is still "using" the trademark as long as "MiceFree" appears on the traps or on tags attached to them and the traps are ready to be shipped when a sale is made.
Similarly, if Kristin, a probate attorney, puts up a website to offer her services under the service mark Probate Queen, her service mark will be in use as long as she is ready to respond to customer requests for her advice.
Reserving a Trademark for Future Use
If you like a certain phrase or logo but you aren't ready to use it, you may be able to reserve it for future use, which keeps someone else from taking it.
You can acquire rights to the trademark by filing an "intent-to-use" (ITU) trademark registration application with the U.S. Patent and Trademark Office (USPTO) as long as someone else hasn't actually started using the trademark. However, even if you file an intent-to-use trademark application, the mark will not actually be registered until it is used in commerce.
The filing date of the ITU application will be considered the date you first use the trademark, as long as you actually use the mark within the required time limits -- six months to three years after the USPTO approves the trademark, depending on whether the applicant seeks and pays for extensions of time.
How to Stop Others From Using a Trademark
Typically, you begin by sending a letter, called a "cease and desist letter," to the wrongful ("infringing") user, demanding that it stop using the mark.
If the wrongful user continues to infringe the mark, you can file a lawsuit to stop the improper use. The lawsuit is usually filed in federal court if the mark is used in more than one state or country, and in state court if the dispute is between purely local marks.
In addition to preventing further use of the mark, you can sometimes obtain money damages from the wrongful user.
Damages for Trademark Infringement
If you can prove in federal court that the infringing use is likely to confuse consumers and that the business has suffered economically as a result of the infringement, the infringer may have to pay you money damages based on the loss.
If the court finds that the infringer intentionally copied your trademark, or at least should have known about the existing trademark, the infringer may have to give up the profits it made by using the mark as well as pay other damages, such as punitive damages, fines, or attorney fees.
On the other hand, if your business has not been damaged, a court has discretion to allow the other company to continue to use the trademark under limited circumstances that are designed to avoid consumer confusion.
For more information on trademark infringement and enforcing your rights, get Trademark: Legal Care for Your Business & Product Name, by Stephen Elias (Nolo).