How to Avoid Trademark Infringement
To avoid trademark infringement, it is necessary to conduct thorough research prior to settling on a trademark and to keep an eye on things after your mark is in use. Without due diligence, your mark can infringe—or be infringed upon—without you even knowing it.
In this article, we'll cover:
What Is Trademark Infringement?
Trademark infringement occurs when there is unauthorized use of a trademark. It can be accidental, like using a mark that is confusingly similar to an existing trademark that you did not notice in your clearance search. Or it can be purposeful, such as producing counterfeit merchandise with the intent to profit off another brand.
Whether it is done with or without intent, there are potential consequences to trademark infringement. This might mean being sent a cease and desist letter, being sued for infringement, or even paying damages to the infringed-upon party.
Avoid Committing Trademark Infringement
To avoid committing trademark infringement, when you land on an idea for your mark, start looking into other trademarks, both registered and unregistered. This means conducting a thorough clearance search prior to deciding on and using your mark. Conducting the search early on, before you’ve prioritized branding with your mark, could save you ample time and money if the search reveals any hits.
For example, if your desired mark is similar to another that promotes goods related to yours, this could mean your trademark would create a likelihood of confusion, where consumers may not be able to tell who particular offerings are coming from. In such cases, the safest option is often to choose a different trademark.
How does a trademark clearance search help me avoid infringement?
A thorough trademark clearance search is the main step in preventing your mark from infringing on another. It is the spring cleaning of beginning the use of a trademark, and as difficult as dusting behind the bookshelf is, it’s the only way to really be dirt-free.
A clearance search involves looking for any other in-use trademarks yours might infringe upon. If consumers could be reasonably confused by the two marks being used in commerce, infringement is possible.
Digging into the USPTO’s Trademark Search is often the first step of a clearance search. This database, maintained by the United States Patent and Trademark Office (USPTO), gives you access to all federally registered trademarks, dead and alive, as well as pending applications.
Submitting a federal trademark application without first checking with the USPTO’s Trademark Search for conflicts decreases your odds of successfully registering your mark. The examining attorney reviewing your application will run such a search, potentially discovering another mark that they believe has a likelihood of confusion with your own. If that happens, this will set your application timeline back many months, and could even prohibit your mark from reaching registration entirely.
And if you’re not federally registering and are instead utilizing common law trademark rights or state registration, you might not think to check USPTO’s Trademark Search—which means you could be infringing on a trademark without even knowing it.
After checking with the USPTO’s Trademark Search, you can broaden your search—look online, on social media, and anywhere else you can think of. If your town is particularly analog, go ahead and check the Yellow Pages. (Business names are not the same as trademarks, but many business names are common law trademarks—it’s worth looking into.)
Our trademark experts can help you register your trademark with the USPTO. Check out our Trademark Service!
Avoid Being Infringed Upon
To avoid being the victim of trademark infringement, you first have to notice that you are being infringed upon. Being infringed upon can include a variety of things:
- Intentionally using your mark’s likeness in order to confuse consumers and profit off your brand
- Accidentally using the same mark as yours while selling similar goods/services
- Using a mark that is not exactly the same, but looks or sounds confusingly similar to yours
- Cybersquatting, when someone maliciously uses your trademark in a domain name in order profit from the deception
Really, infringement can be any unauthorized use of your trademark (or one that’s confusingly similar) that connects it to a different business’ goods/services/brand.
When your trademark is infringed upon, there can be monetary repercussions—your brand, as it connects to your goods/services, could be negatively affected by this other business’ actions and products. Additionally, you could lose out on money that consumers are spending on the other business, misguided about who’s offering the products/services.
However, unless you overhear someone in line at the grocery store whispering their plot to use your trademark behind your back, you can’t really stop someone from infringing upon your trademark. What you can do is take protective actions and make an effort to stop their continued infringement.
Protect Your Trademark
One of the best ways to protect your trademark is to use it far and wide. By using your trademark in commerce, you keep it active, which protects its rights and gives your competitors a greater opportunity to see it in the marketplace and avoid accidentally infringing.
Other forms of protection include trademark monitoring, documenting your trademark’s lifespan, and maintaining business insurance in case legal action is taken against you.
Trademark monitoring is the process of keeping an eye on similar trademarks that pop up selling goods/services related to yours. It can be done yourself or with the help of a monitoring service, and is one of the most effective ways to discover infringement.
If a trademark clearance search is the first movie in a franchise, trademark monitoring is the sequel. You typically do a clearance search before you commit to a trademark. Trademark monitoring happens once you’ve settled on a mark, for as long as the mark is in use.
To do trademark monitoring on your own, you’ll want to frequently search places like:
- USPTO’s Trademark Search
- The Gazette, a USPTO-official journal that publishes pending federally-registered trademarks
- State business and trademark registries
- Domain registries
- Social media
- Online search engines
You’ll also want to consider searching for misspelled versions of your mark and synonyms, as marks don’t need to be identical for infringement to be found.
Trademark documentation can be anything from a photo of the first time you sold something with the trademark attached to your actual registration paperwork. Documenting everything helps ensure you have as much tangible, indisputable proof of your claim to your trademark as possible.
If you are falsely accused of infringing on a business’ trademark, you’ll have to prove—either to the accusers or to a court—that you haven’t done anything wrong. Trademark law favors the trademark owner who first used the mark in commerce. By documenting when you first came up with the trademark, when it was first used, and when it was first connected to a sale, you are able to show your trademark’s life story and time line.
If you are trying to stop someone else from using your mark or get compensation for lost money because of trademark infringement, you likewise need documentation to prove ownership. Particularly when there is accidental infringement, the other party might be equally convinced that they are in the right—if you have no way to prove that your trademark was used first, you might be legally forced to quit using your mark.
This document trail is particularly important when using a common law trademark, as there is no official registration that can be used as part of your evidence.
General liability insurance is an incredibly important part of owning a business, for reasons ranging from protecting your personal assets if you’re sued to helping with the cost of property damage. In terms of how it connects to trademarks, many forms of business insurance include the cost of fighting to protect your trademark. This could include:
- Court and lawyer fees if sued
- Payouts for committing infringement
When choosing your plan, look for specific mentions of trademark infringement and intellectual property claims—these can give you a better idea of how helpful a particular policy will be in the face of trademark infringement.
Frequently Asked Questions
What should I do if I think someone is infringing on my trademark?
If you believe someone is infringing on your mark, the first step is lots of research. You’ll want to look into the background of the potentially infringing mark to see how long it’s been in use, what goods/services it’s associated with, and whether it has been registered. If you determine there is infringement, a couple common next steps include sending a cease and desist letter and filing a lawsuit.
What happens if I infringe on another business’ mark?
If you infringe on someone’s trademark, you could be sent a cease and desist letter, which will inform you of your infringement and the sender’s demands. This gives you a chance to respond: let the trademark owner know they are mistaken about the infringement, stop use of the mark, or try to find a compromise so both businesses can still use their marks.
Can someone sue me if I infringe on their mark?
Yes, you can be sued if you infringe on a trademark. Though businesses typically send out cease and desist letters prior to filing a lawsuit, they aren’t mandatory. To lower your chances of being sued, it’s important to prevent infringement before it begins.
What is trademark dilution?
Trademark dilution occurs when a famous trademark is used for selling a different company’s goods/services without the mark owner’s permission. The result of the misuse often has the potential to hurt the original brand.
What is free riding?
Free riding is when a business uses your brand—and the connection consumers have with your brand—in order to sell their own products. It’s like the sinister version of a celebrity collaboration with a brand, because the “popular brand” does not agree to this connection.