You’ve put a lot of sweat, time, and resources into creating your brand and developing brand awareness. So, what should you do when you spot someone else using a brand that bears a striking resemblance to yours? Before rushing into action, it's imperative to consider the potential pitfalls and seek professional guidance. As a trademark lawyer, I strongly advise against taking any steps without consulting an attorney first.
The knee-jerk reaction for many is to confront the other party directly, demanding they cease and desist using the similar mark. It can be so tempting to do this when they are only an Instagram DM away. However, this approach can backfire significantly, especially if your trademark isn't registered. Accusing someone of using a confusingly similar brand when your mark isn't yet registered could inadvertently put you at a disadvantage.
Here's why:
Imagine this scenario: you hastily send a cease and desist letter to a business using a similar mark (or even a casual DM, politely asking them to stop), only to discover they promptly file for registration of the name, which exponentially complicates the situation and puts you at a disadvantage.
Even if you have a pending trademark application, it's generally not advisable to raise a trademark issue until your trademark is registered, except in very specific circumstances. This is because one of the final phases of the trademark registration process is publication for opposition, during which the world has a 30-day period to oppose the registration of your mark. By raising a trademark issue prematurely, you might inadvertently inspire someone to file an opposition, complicating matters further.
Beyond all of the procedural considerations, it is also important to get expert advice in determining whether the other brand is similar enough that their use violates your trademark rights. Trademark infringement occurs when there is a likelihood of confusion between similar marks that are used in connection with related goods or services. Understanding the likelihood of confusion standard is crucial in navigating trademark disputes. Key factors to consider include the similarity of the marks, similarity of goods or services, strength of the senior mark, similarity of marketing channels, and evidence of actual confusion. However, each case is unique and requires careful assessment by a trademark lawyer.
Encountering a similar brand can be a daunting prospect for any business owner, however, it’s essential to approach the situation methodically and seek legal guidance to protect your brand's integrity effectively. By consulting with a trademark lawyer, you can navigate the complexities of trademark law, avoid potential pitfalls, and safeguard your brand's future.
