What should you do if you find that somebody is using your registered trademark? First, you should check that your trademark is still valid. Sometimes people think they have a valid trademark, but it’s actually lapsed because they’ve forgotten to pay registration or renewal fees.
Second, do you actually own the trademark? Sometimes people find that it was registered in the name of a company that they had previously owned, which is now re-registered, which evidently may be a problem.
Third, is the infringer using the same or similar name or brand? If it’s not the same or similar then you won’t have a case.
Fourth, are their goods or services the same or similar to what’s listed in your trademark registration? I’m not talking about the actual services or goods that you provide, I’m talking about what you have trademark protection for in your list of goods and services.
Fifth, is this infringer using it in the country of your trademark registration? If you have a trademark registered in the USA and somebody is using the same thing in Australia, you can’t enforce that USA trademark against the use in Australia.
So if all of those five things are apparent, then the next thing to do, is write to them. Don’t write a long letter or a long explanation and don’t try and be nice. When you try to do that, you can get yourself in hot water and make inadvertent admissions that can go against you. So simply say, “I own this trademark, it is for these goods and services, I see you are using this, I think it infringes, Please can you stop using it, get back to me with your response when you can.”
Now, if you have a trademark that’s quite similar to what they’re doing, but it’s not the same or if your goods and services are not quite the same as what they’re doing, then you might need to talk to a trademark attorney. I would recommend that when you interview your trademark attorney, you find out whether they have ever dealt with contentious matters before. Because you don’t want somebody who’s just used to filing applications. Instead you want to speak to somebody who’s actually been to court, who’s litigated trademark matters, and who has done trademark oppositions and has won. My name is Cathryn Warburton and I am the legal lioness.
