Once you identify someone, whom you believe is engaging in trademark infringement on your marks, you need to understand what to do next.
You have several options if you find that some third party is infringing your name or brand mark. The first thing you need to do is assess how serious the claim of infringement might be. An experienced trademark attorney will be able to help you understand the merits of your claim and what possible defenses might arise. It is critical that you fully understand the merits of a potential claim for trademark infringement before sending a notice letter, threat letter, or filing a trademark infringement lawsuit. Asserting rights in a name which you do not truly own, or try to extend your trademark rights beyond what is permitted by trademark law could backfire. Your trademark infringement notice letter could result in a trademark infringement threat letter back against you.
Assuming that a competent trademark lawyer believes you have adequate rights to assert a claim of infringement, your next step will be to determine whether to send a trademark notice letter or a trademark infringement threat letter. The difference between the two is subtle yet important. A notice letter is much more friendly in tone. It seeks to advise the other party that there is a potential problem. The letter puts the third party on notice of your trademark claims and exclusive rights. Typically, a notice letter will invite discussion.
A trademark infringement threat letter tends to be much more aggressive and confrontational in tone. It will not only advise of your superior trademark rights, but demand immediate steps be taken to avoid any further infringement. A threat letter may also make an immediate claim for damages based on prior infringement.
In addition to monitoring for third party infringement and sending notice and threat letters as appropriate, you also need to extend your trademark rights. This means that you can file additional trademarks for other goods and services beyond your main business effort. You can also file different international classes to the extent you offer service in those classes. There are almost always multiple international classes that you can file for trademark registration in. By adding to your “family of marks” you increase the scope of your trademark brand and name protection, as well as strengthen your primary mark. Adding multiple trademarks increase your overall trademark portfolio value. If you should ever sell your company to a third party, your trademark rights will be an important asset in any sort of deal.
Feel free to contact one of trademark attorneys for more information.