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Wednesday, September 4, 2013

Determining If Your Trademark Has Been Infringed Upon

By Steven Shape, IP Attorney

Here is a quick set of questions one can answer to determine if an alleged infringer is more than "alleged."  In other words, is your trademark being infringed upon?

1) Is your trademark currently in use?

To have ownership rights in a trademark, the mark does not have to be registered with the US Patent and Trademark Office (USPTO) or a state trademark agency.  If the mark is being consistently used as a trademark and the mark meets certain qualifications for trademark protection under the law (ie. the mark is not generic, merely descriptive, etc.), then you have rights.

2) What is the scope of your rights?

If the mark is not registered in the USPTO, then your rights are limited geographically to where it is being used. If it is registered in the USPTO, then you may have nationwide rights.

3) What are the goods and services?

What goods and/or services are you using the mark on?  Some expansion may be possible, but your current use will limit the scope of your protection.

4) Is there a Likelihood of Confusion?

When comparing your mark to the alleged infringing mark, would a consumer likely be confused as to the origin of the product or service on which the mark is used?  Many elements are considered in this analysis, but not one is conclusive -- they are all reviewed in their totality.  It comes down to the question of whether a consumer would be confused.  If the answer is yes, then there is arguably infringement.

If you are planning to use a mark, file an intent-to-use application with the USPTO to gain the upper hand on others who may adopt the mark after you file.  If you are using the mark in more than one state or on the internet, file an application with the USPTO immediately.

Disclaimer: Please note that this article does not constitute legal advice, and should not be relied on, since each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This post does not create an attorney-client relationship.

© 2013 Steven M. Shape  All Rights Reserved.

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