There are four basic components to brand protection: searching, registering, policing and enforcing. These four aspects each have their own challenges which create a series of risks and opportunities. If done well, the four components work together in a way that achieves the business objectives of the brand owner.
The area of enforcement is critical if you want to maintain your rights in your brand. The government does not employ trademark police. Accordingly, if you want to control the rights in your brand, you must assume the responsibility of enforcing your rights.
Most clients are confused when it comes to the responsibility of enforcing the rights in their brands. The question of how aggressive they should be is quite common, which further breaks down into which parties should be contacted, what form the initial contact should take and how far you should push the issue. Of course the answer for each party is different, and often depends on the brand being enforced and the overall business mindset.
This article relates to the enforcement component and some of the strategies that exist, including the offensive and defensive perspectives and how the decisions made may be impacted based on the status of the brand in question.
Introduction to Offense
It starts innocently enough. You are talking to one of your better clients about an upcoming project. Suddenly, out of the blue, the client says that he’s sorry he didn’t come visit your booth at the last convention. You’re not sure what he’s talking about since your company hasn’t had a booth at a convention since COVID hit. You ask a few questions trying to get to the bottom of the misunderstanding. He insists he saw reference to your company at a convention last month and sends you a listing of all the companies who sponsored a booth. There you see it. It hits you like a ton of bricks. There is another company in your industry using a name that is so similar to yours that your best client thought it was you.
You of course thank your client for bringing this to your attention and assure him that this was not your company. The client asks you what you plan to do. Then you think, “what do I plan to do??”
There is great anxiety the moment you become aware that someone else is using a similar name to sell a related product. Your first thought is “I’ll sue them!,” but then additional questions come flooding in. Can I win a suit? Do I have rights? Who do I call? Can they stop me from using my brand? Is suing even the right step? How much will this all cost?
All of these questions are valid. Having a competitor dilute the value of your brand is costly. Changing the name of your company, an important line of products or any other brand can also be an expensive change. Sometimes changes like this can threaten your business. If you find yourself in this position, you undoubtedly will wish you had spent more time protecting your brand.
There are many options available in this situation. While filing a lawsuit is certainly one of these options, it is certainly not the only option and is likely not the first step. Further, there are non-legal implications to consider. For example, maybe you can find a way to turn this into a win-win; or maybe you need to consider the marketing and/or social media implications if you are too aggressive.
If you find yourself in this situation you need to contact brand counsel for advice. Some lawyers in this space refer to themselves as trademark lawyers or IP (intellectual property) attorneys. I would caution that an attorney’s title shows what area of law the attorney truly practices. While any of the titles I listed will likely lead you to a competent lawyer, titles like business counsel, divorce attorney or patent lawyer will lead you to lawyers with different skills. If the only lawyer you know practices criminal law or employment law, you should only call them if you want to ask for a referral to brand counsel.
Counsel’s Review of an Infringement claim
The test for infringement in trademark law is likelihood of confusion. That is, will a typical consumer of one brand likely be confused that the other brand is somehow connected. The most significant factors in this test are whether the brands themselves are similar, and whether the underlying goods or services are related. If there is a likelihood of confusion, the junior user is frequently forced to stop using its brand.
Given this, one of the first steps by counsel in any infringement analysis is to determine which party would have rights to continue using their brand if it is determined that the brands are infringing. This frequently boils down to: who started using their brand first? The last thing you would want to do is to successfully argue that your brand is likely to be confused with another brand, only to discover that the other brand has priority and can continue using the brand while you will need to stop using your brand. It is not uncommon to hire an investigator to help with this step.
Assuming you have priority, counsel next would want to determine whether there is a likelihood of confusion. This includes comparing the brands themselves to determine how similar the commercial impressions of both brands are, and compare the goods and/or services to see if they are related. Counsel may also want to see if the brands travel in the similar channels, whether there are many similar brands in this market space, whether there has been any actual confusion, etc.
I typically take an extra step at this time. As counsel, I write a paragraph or two describing why there is a likelihood of confusion between the brands, and then I pick apart my argument. I go through this several times until I am convinced that I can at least make a prima facie case of infringement.
Once I feel confident that my client has priority, there is a likelihood of confusion and that I can express a convincing case of infringement, I then talk to the client about next steps. Determining that there is an infringement and your client has priority is one thing; determining what to do about it is the critical step in the process.
Counsel’s Discussion with the Client regarding an Infringement claim
Once counsel has determined that there is a likelihood of confusion, they should discuss the “behind the scenes” issues with the client. The client likely has so much to add to the analysis if it is asked the appropriate questions by their lawyer. These questions typically relate to the client’s interest in the brand, the history between the client and the infringing party, the client’s appetite for pursuing this matter and, most importantly, what outcome the client desires. The answers to these questions can be used to chart a strategy for pursuing the infringing party.
The most important question is the client’s perception of its own brand. There are typically two parts to this including how important the brand is and how long the client plans to use the brand.
I next like to know if there is a history between the two companies. This can include whether they have been involved in prior litigation, prior demand letter campaigns, stolen employees from one another, taken client accounts from each other, etc.
Third I like to know how likely the client is to pursue this matter to a final disposition. Would the client be willing to sue over the matter if necessary? Is the client trying to get a quick and easy result? Is the client just trying to make a point?
Finally, I’d like to know what the client wants as a final outcome. This can include a simple interest in eliminating confusion between the parties to monetary damages from the other party to compensate for ongoing harm.
Once I’ve collected this information, I like to develop a strategy for contacting the infringing party. This first contact is crucial as it often sets the tone for the duration of the conflict between the parties. It is also important to consider that this initial contact could get published on social media, so in addition to legal considerations, you should also factor in social and marketing implications. While there is no “one size fits all” solution, initial contact strategies typically fall into one of four categories: win-win solutions, notice letters, demand letters and lawsuits. It is not uncommon for a contentious conflict to progress through these categories. I will discuss each of these over the next four posts.
Win-Win Solutions in Connection with Trademark Infringement
Not all conflicts need to be contentious. In fact, I like to START my strategy analysis with the objective of finding a win-win solution. I like this strategy because, when compared to the other strategies, it is far more likely to be successful, is often completed in half the time and can be far less costly. Win-win solutions can take a number of forms, but common solutions are license agreements and co-existence agreements.
A co-existence agreement is one potential good outcome for both parties. This agreement acknowledges that each party has the right to use their brand in specific ways. Typical divisions are along geographic lines (e.g., one party can use its brand east of the Mississippi River, and the other company can use its brand west of the Mississippi River), by offerings (e.g., party A can use the brand on product X and party B can use the brand on product Y) or any other way that will allow the companies to use the brands while avoiding confusion. This agreement may be disfavored as the infringing party can continue to use its brand, but it effective in situations in which there is a close case of infringement. One major benefit is that the parties can continue to protect their brands against other parties.
A license agreement allows the infringing party to continue using its brand, but now the use will be under the control of the client and the benefits of the use will accrue to the client. It is even possible that the client can get royalties from the use. Further the agreement can be drafted such that the client can terminate the license if the other party fails to meet certain future criteria. One of the benefits of this arrangement is that the infringing party acknowledges the client’s rights in the brand, and the client will gain some control over the infringing party’s future use of their brand. Of course one of the negatives is that the infringing party will continue using its brand.
Other win-win solutions could include one party acquiring the intellectual property rights of the other or one party agreeing to stop using the brand once a specific event occurs (e.g., once current inventory sells out, not to exceed 6 months).
Win-win solutions make the most sense when there is a weak or logically difficult case of infringement, or the “behind the scenes” factors from the client show that it does not want to be aggressive against this specific infringing party. While these solutions do not have the great feel of winning a lawsuit or otherwise making a third party stop using a mark, they are nonetheless useful in demonstrating that the client is policing its brand and has positive enforcement outcomes. These solutions also start the conflict off in a positive direction and lets the other party know that your client is reasonable, but resolute.
Notice Letters in Connection with Trademark Infringement
Notice letters are another way to begin a conflict in a non-contentious manner. Unlike a demand letter which sets out a specific demand, a notice letter simply notifies the other party of your client’s rights and generally describes that the other party is on the verge of infringing your client’s rights. This letter makes the most sense when at least one party has made changes to its use of a brand (e.g., they have been offering the brand for sale in new geographic locations or in connection with an increasing number of goods or services). I like this strategy because it does not require a response by the other party, but serves to put them on notice if they do commit an act described in the letter.
The art of the notice letter is to be specific and reasonable, and to do so without making a specific legal threat. Most letters regarding trademark infringement describe the sending party’s rights and the reasons the receiving party may be infringing those rights. The notice letter is tweaked in this respect to describe the changes that the receiving party has made that has made the use of its brand likely to be confused with the sender’s brand. An effective notice letter will contain language that a specific act may constitute infringement. The sender should avoid making definitive statements and threats as this could lead to the receiving party requesting a declaratory judgment.
An example may help clarify these points. Assume you own a restaurant in Boston, and you’ve become aware that another company owns a similar style restaurant with a nearly identical name in Washington, D.C. Then you learn they opened another location in Philadelphia, and then another in New York City. You are concerned that Boston is next, and this would cause confusion. I would add language that you are concerned about their growing geographic use of their brand, that further growth would result in a likelihood of confusion, and you would consult with counsel regarding appropriate next steps if they opened a restaurant within 25 miles of your restaurant.
Notice letters make the most sense when you are concerned that a continued action by a third party will result in a likelihood of confusion. These serve the incredibly useful purpose of attempting to prevent infringement, and can be used as evidence that the other party was aware that their action would be infringement. These letters typically start the conflict off in a positive direction and lets the other party know that your client is reasonable, but resolute. You do need to be careful about your use of these letters. For example, if you feel the other party’s current use of a brand infringes your brand, sending a notice letter can be interpreted that you think their current use is acceptable, thus weakening your ability to protect your brand.
Demand Letters in Connection with Trademark Infringement
The most common request I receive from clients who have discovered an infringer is that I send a demand letter. While this is frequently the best first step, it is worth considering whether starting the conflict with an aggressive tone is the right move to achieve the desired objective. My father taught me that you can go from nice to forceful much easier than you can go from forceful to nice. This is axiom is equally true in brand enforcement. One of the first things to consider before sending a demand letter is whether you can resolve the issue via a win-win solution or a notice letter.
The historical guidelines for a demand letter were that the letter should identify your client’s rights, describe how the other party is infringing those rights and make specific demands that would eliminate the confusion. These guidelines hold true today, but we should now add that the letter should be reasonable from a social/ marketing perspective. Why? Your demand letter is very likely to be posted by the recipient on social media in an effort to embarrass the client (and possibly counsel too). Thankfully I have always followed the “reasonable” standard as I have had several of my demand letters land on social media pages. The last thing you want for your client is to have your letter become the leverage the other party needs to thwart your efforts to stop the infringing behavior. I am pleased to share that on several occasions in which my demand letter was shared on social media, the majority of the comments supported my position that the infringing party was being unreasonable. 😊
Another concern with sending a demand letter is that the client needs to be ready to pursue the matter until it gets a reasonable result. That is, if your demand letter is ignored, you need to be ready to follow up with another letter, call the opposing party, send emails, file suit, etc. until you get appropriate redress. Sending a demand letter and not following through is worse than not sending a demand letter in the first place. Make sure the client knows what it is willing to do in the likely event that the other party disagrees with or ignores the letter. This may include both what lesser concessions the client is willing to accept and how much effort they are willing to take to get these concessions. It should be clear to the client that filing suit could be an alternative.
My final comment also relates to lawsuits. The other party could use the demand letter as grounds to request a declaratory judgment from the court. That is, they may seek a legal determination that their actions do not infringe your client’s rights. This type of legal action can be expensive, and typically serve as a segue for your client to countersue with a claim of infringement. Accordingly, demand letters make the most sense when you are very bothered by the actions of the infringing party, and are willing to take all reasonable actions to get a desired result.
Lawsuits based on Trademark Infringement
Lawsuits are seldom the best place to start in an enforcement matter. First, lawsuits are very expensive so these should be reserved for special occasions. Second, common decency dictates that the other party should be given a chance to address the matter before you involve the courts. Third, the courts will likely suspend the suit to allow the parties a chance to resolve the matter amicably before the court will get involved, which will mean the plaintiff has wasted the costs of filing the suit if the matter is resolved without the court’s involvement.
I want to be clear that my comments above relate to the first steps in brand enforcement. I strongly encourage clients to file a suit if their rights are being infringed and the infringing party refuses to take action. Lawsuits are expensive, but they are far cheaper than a competitor stealing from or chipping away at the value of your brand.
There are a few occasions in which filing suit is the correct first action. The most common is when you need immediate action to stop a third party from taking an action that will cause irreparable harm to your client. This is typically referred to as a temporary restraining order (TRO). As the name implies, it only seeks temporary relief, but it is often coupled with a lawsuit that seeks to resolve all issues.
Another instance in which a lawsuit may be an appropriate place to start is when the parties have a history of antagonistic interactions. In this case the client is likely to know that it won’t receive any meaningful response from a demand letter, and the only way to get a response is to be compelled by the court.
Lawsuits of any variety are expensive, and trademark infringement actions are no exception. Depending on factors such as the complexity of the arguments and the size of the law firm representing you, a lawsuit can easily reach six figures to complete, and may reach seven figures. Accordingly, this step should be reserved for serious issues in which there is no other palatable solution available.
Non-traditional Responses to Trademark Infringement
My previous four posts assumed that the infringed party would communicate directly with the infringing party. While this is the common way to handle these situations, it is not the only way.
In today’s world it has become common for parties to operate on platforms offered by others. For example, I frequently post artciles on LinkedIn since it allows me to create a base of followers far easier than I could otherwise build. What if I were using this platform to infringe the rights of my competition? Certainly they could send me a message directly (and they may even use LinkedIn’s message features to start the conversation). Another option is that they could use features offered by LinkedIn to delete my infringing post or, in extreme circumstances, ban me entirely from the platform.
LinkedIn is not the only platform on which infringement is likely. Other social media platforms such as Facebook, Instagram and others face similar situations and offer take down options. Social media companies are not the only ones with these concerns. Ecommerce platforms perhaps have a bigger potential problem and most have them have instituted provisions to address any problems. One of the more well-known provisions is Amazon’s brand registry. This system has become popular enough that it is often cited as one of the causes of the increase in trademark applications in the USPTO.
Parties should think creatively when addressing infringement. While reaching out to the infringing party is usually most logical, it is not the only solution. Using a third party can be either a method to resolve the infringement entirely, or at least add leverage when dealing with infringement.
Defending an Assertion of Trademark Infringement
We’ve discussed how to address a situation in which you want to tell another party that they are infringing your rights, but what about the other side? What should you do when you receive a letter (or lawsuit) claiming that you have infringed the rights of a third party? If you only remember one thing, remember that you should not ignore this letter! Further, if the writer has requested a response by a certain date, try to at least respond by that time that the matter has been forwarded for serious examination and that a response will be forthcoming.
In many ways defense is the opposite of offense. You should start by deconstructing their claims of infringement. What support do they provide that they have rights? What evidence do they include that you have infringed their rights? If there is infringement, have they proven that their rights predate yours? Do you have any contrary evidence? You should look at all of this critically and determine whether you agree with the other party.
Once you have your own initial sense of whether your party is infringing, it is time to discuss how you should respond. If you feel your client is undoubtedly infringing, you should suggest that, to prevent further conflict, your client will agree to change over a period of time. If you feel there is honestly no infringement, you should state so definitively without going into great details of why there is no infringement. (Not doing this can prolong the conversation, only about issues other than the relevant issue.) If the party continues pestering you, you may want to consider whether filing a Declaratory Judgment action is appropriate. The tough consideration is when the matter is a close call.
In close calls, my normal advice is to offer something that you feel makes the chance of infringement even less remote. It is best if this thing is something your client did not value. For example, if you are a restaurant being contacted by a consumer ice cream brand, maybe you offer to never sell cold desserts in grocery stores. This may give the other side the moral victory they feel they need to close the matter quickly, and without causing your client any great pain. Pro tip: it makes sense to memorialize this in a co-existence agreement.
More than anything, I try to put myself in the other party’s shoes. What would I want if I were them? What would make this go away? Is there a way to find a win-win?
It is important to keep in mind that brand enforcement is just one portion in the cycle of brand protection. This means several things to me.
First, brand enforcement is no LESS important than the other three links. Have you bothered to search and clear your brands before using them? Have you taken the care to register the brands that are most valuable to you? Are you engaged in policing activities? If you’ve answered “Yes” to these questions, you should be diligent in undertaking enforcement matters.
Second, brand enforcement is no MORE important than the other three links. If you feel you would want to send a demand letter if a third party began infringing your rights, you should certainly take part in the other steps. While you certainly have the right to send demand letters without engaging in the other steps, your chance of success is much higher if you do engage in all steps.
Finally, it is worth remembering why brand protection is important. A brand is an element that allows you to be distinguished from your competition. It is how you are identified by your customers. Without it, you are one of the masses. You’ve worked hard to pick just the right brand and then you spent much effort to develop it to the place it is today. Its value is real. Losing it could be a business ending outcome. Protect your brand!