Brand Theft

As an entrepreneur, you have worked hard to carefully build your reputation. However, imagine that one day you are surprised by that customer that tells you about that ‘other store’ that has the same name as yours that doesn’t uphold the same standard of excellence that you do. Or, one morning, you notice that someone has a domain name stealing your web traffic through a common misspelling. Aggghhh you yell! After the initial frustration wears off what do you do?

Here are some tips for you to evaluate:

  1. How important the brand is to you?

If the brand is important to you, have you protected it through a U.S. trademark? If you haven’t yet, but you used the name first, you should still file a trademark with proof of your priority use. Have you actively started marketing your products or services with your brand name? Did you use your brand first?

  1. How important the brand is to the infringer?

Are they a real business, or just a website and a hand basket? Are they your competitor? If they aren’t a real business or a competitor, do you really care? If your competitor isn’t selling anything yet, will they simply agree to change their name if you call them?

  1. Will they fight back?

Is the infringer a very well financed company that is likely to aggressively fight you back? Get a sense of your enemy by looking at their team or investors page. The saying goes, never poke (too forcefully) a grizzly bear in your path. You are bound to get eaten, even if you are right.

  1. Are you adequately protected?

Before you proceed to exploring legal action against your opponent, determine whether you have adequate intellectual property protection. Are they infringing just your business name, or your invention? Do you have patent protection for your inventions? Are your filed trademarks registered yet? Are they a foreign company? Do you have international trademarks in the country in which they operate?

  1. Is there a business solution?

Resist the urge to send a nasty letter (also called a Cease & Desist letter) or file a lawsuit right away. Anger is the wrong emotion to have at this stage. Take a step back, and try a rational business solution first. It will be less costly, and perhaps just as effective or more so. Consider making a friendly phone call or setting up an in-person meeting to discuss a mutually acceptable solution. Sending a Cease & Desist letter might cause your opponent to run to the courthouse and sue you for a declaratory judgment, effectively making you the defendant in your own brand. Similarly, suing someone right away, before trying to work out a business solution, is rarely a good idea. Often times, things can be solved in gentler, business terms through friendly meetings.

  1. Take legal action.

If you have exhausted all business options, and are ready for the long haul fight, talk to an experienced trademark litigator, such as our litigation attorneys at LegalForce RAPC in Mountain View, California the law firm that created the Trademarkia website in Mountain View California to explore your formal litigation options. Litigation is rarely cheap, so make sure you explore the above alternates first. Often, trademark litigation can cost between $150,000 and $1 million dollars. Use this option only if you have no other to protect your rights.

This article presents the views of the author and do not necessarily reflect those of LegalForce RAPC or its clients.  The information presented is general information and for educational purposes.  No legal advice is intended to be conveyed; readers should consult with legal counsel with respect to any legal advice they require related to the subject matter of the article.

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RAJ ABHYANKER, is the founding partner of LegalForce RAPC Worldwide. Raj is a winner of the American Bar Association Legal Rebel award, and the Fastcase 50 Legal Innovation Award. In addition, Raj was an economic policy adviser to the Chief Technology Officer of the United States White House for the America Invents Act, and invited speaker at the Association of California Bar Associations conference, and an invited speaker at the U.S. District Court (9th district) Judge Aiken conference on Innovations in Law, Science, & Technology. He has been quoted in the ABA Journal, New York Times, Bloomberg, Fox News, and Fast Company magazine.