Michael E. Byczek
Attorney
Trademark Infringement
You have a federal trademark. Now what?
A search looks for companies that are using your name or one that is confusingly similar, products that are imitations or counterfeits, copies of your logo, or any other usage of your trademark that is being used without permission.
Business Names
A company that is using your name will probably advertise. Search engines may locate business web pages that match a set of keywords. Commercial networks, such as eBay and Amazon, are searched for sellers that are using your trademark. Video sharing sites, such as YouTube, are also searched for companies that are marketing their products and services with your identification.
A set of keyword variations will be devised to locate confusingly similar names. For example, if an infringer copied the name "Trademark Legal", he/she could use names such as "TM Legal", "Trademarked Legal", "Legal Trademark", "Drademark Legal", "Trademarc Legal", and so on.
To the extent possible, a search will also include phone books, business licenses, corporation registrations, and other databases that would indicate whether a company is using a name without advertising on the Internet. There is not enough time or money to perform a comprehensive search of business licenses in every city and state in the country.
Logos
If an infringer is using your logo, a search will either be very easy or extremely difficult. Assume your company is called "Trademark Legal" and the logo is a fancy 3D trademark symbol. A search could locate other companies that act as trademark attorneys and determine whether these businesses are using your logo.
However, your amazing logo may have been copied by a different type of company. For example, assume that the 3D symbol was infringed by a real estate broker who simply liked the image. It would be virtually impossible to locate this type of infringement because no keyword search could locate where the logo is being used.
Business owners should assume that fancy, intricate, or attractive logos are probably being used somewhere in the world. A very attractive logo has probably already been used on t-shirts. You could search for t-shirts on eBay and never find your logo. Some t-shirt companies may post a few representative samples on eBay, and offer your logo through a catalog. A company in Europe or Asia could sell only at local markets without any website, let alone an international classified advertisement.
Imitations and Counterfeits
If your brand and reputation has a good customer base, chances are that an infringer will copy and sell fake products and services using your name. Imitations, counterfeits, and pirated merchandise is easy to sell. Your business reputation is at stake, especially if complaints are posted on Internet blogs, review sites, or submitted to the government or a consumer reporting agency.
Recent Cases in the News
Facebook filed litigation against Chinese companies to stop them from using domain names that infringed their trademarks. The company wants damages in the amount of all profits and $100,000 for each instance of infringement.
Verdict against Walmart for $95 million for using another company's trademarks to sell merchandise.
The store Trader Joe's filed an infringement lawsuit against a Canadian company calling itself Pirate Joe's that was reselling products through knockoff branding and online merchandise.
The estate of Marilyn Monroe pursued trademark infringement against a company that was selling similar merchandise. The basis was that consumers would be confused that these products were endorsed by the Monroe estate. This involves her name, likeness, voice, and rights of publicity.