Archive for December, 2008

Trademarks: The Importance of Protecting Your Mark

Okay, you’ve just gotten a trademark from the USPTO and you are happily using your mark in the stream of commerce to sell your product ( i.e  you are regularly selling your item with your trademark clearly labeled on your mark)

Regrettably, your competitor, who is only three towns over, and sells a product materially similar to yours  adopts a logo similar to your logo two years after you are granted your logo from the USPTO and three years after you started using your logo in the stream of commerce.   What are your options, and why should you care? After all, competition is healthy right, and, as  the business phrase goes “steel sharpens steel”, right?

Well there are some issues  to consider- is your trademark being diluted? Do your clients and potential clients get confused by the similarity of the logos and can’t determine which product is the one they prefer? Are you losing out on potential clients due to the logo confusion and product confusion?  The test boils down to whether or not a reasonable consumer would be confused by the similarity of the marks and the products.

If after thorough analysis, you determine that the mark would be infringed, what are your remedies?  Despite the bleakness of the situation, you do have options. You can ignore the competitor’s action ( and risk that your mark will become diluted, and your intellectual property rights will be limited as a result) send a carefully worded cease and desist letter,  license your logo to your client ( again, causing a dilution problem potentially, but also having the advantage of avoiding litigation) or file suit.

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