You’ve just discovered someone using a trademark that’s uncomfortably similar to yours. Your first instinct might be to call a lawyer and file a lawsuit. But hold that thought; litigation should usually be your last resort, not your first response. There are several effective (and less costly) ways to handle trademark disputes before heading to court.

Start with Strategy, Not Lawsuits

Before taking any action, take a step back and evaluate the situation objectively. Start by documenting everything about the potential infringement and assessing the actual threat level to your business. Did this infringer start using the trademark before you? Before you registered? How close are the products or services the infringer is selling to yours? Is there genuine customer confusion happening? What’s the real impact on your bottom line? How many others use a similar trademark for similar goods or services? Understanding these factors will help you develop a measured response that fits the situation.

The Power of Professional Communication

Here’s something many people don’t realize: often, the other party may not even know they’re infringing on your trademark. A professional phone call or email can sometimes resolve the issue quickly and amicably. Keep your initial outreach factual and non-threatening, focusing on finding a solution rather than making accusations. Document everything, but maintain an open dialogue – you might be surprised how many issues can be resolved with a simple conversation.

The Cease-and-Desist Letter: Your First Formal Step

If direct communication isn’t possible or effective, a cease-and-desist letter is typically your next move. Think of it as a formal way of saying, “Hey, we need to talk about this.” A well-crafted cease and desist letter establishes your trademark rights, details the specific infringement, and requests concrete actions to resolve the issue. The key is maintaining a professional tone while setting reasonable deadlines for response and action.

File an Infringement Report or Takedown Notice

Many e-commerce sites (Amazon, Etsy, Shopify sites, etc.) and social media sites have a form to report infringement of intellectual property. These can be a fast way to get an infringing listing taken down, which usually results in a quick response from an infringer. This can be used simultaneously with a cease and desist, or before or after; it’s a strategy decision.

Finding Middle Ground: Negotiation and Coexistence

Sometimes, both parties can find a way to coexist in the marketplace. This might involve:

• Setting geographic restrictions for each brand
• Dividing market segments
• Making minor modifications to branding
• Creating licensing or coexistence agreements

The goal here isn’t to “win” – it’s to find a solution that works for everyone while protecting your brand’s integrity.

Mediation: When You Need a Little Help

If direct negotiation hits a wall, consider mediation. This structured approach brings in a neutral third party to facilitate discussion, offering several advantages over immediate litigation:

• More cost-effective than court proceedings
• Less formal and adversarial
• Better for preserving business relationships
• Often leads to creative solutions neither party considered

When Legal Action Becomes Necessary

Sometimes, despite your best efforts, litigation becomes necessary. Consider legal action when you’re facing continued willful infringement, significant business damage, or when good-faith negotiations have failed. Time-sensitive situations or clear and demonstrable confusion might also push you toward the courtroom.

Remember, protecting your trademark doesn’t always mean going to court. Often, a thoughtful, strategic approach can resolve the issue while saving time, money, and business relationships.

Need help developing a strategy to protect your trademark? We’re here to guide you through your options. Call us today at (888) 666-0062 or click here to schedule your initial Discovery and Strategy Session online.

DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.