BKIP Limited

COPYRIGHT BKIP 2019
What happens if someone sues me for Trademark Infringement? Apr 2019
When you have a trademark that you are using registered or not, this could be a killer question. If or when you ever do come across a situation where another is trying to sue you for trademark infringement, there are certain things you should be aware of and most of all how to AVOID it. More than often people who use a trademark, just don’t know they are infringing another mark. The two options below will however still apply.
There are two routes that can be sought by the person suing. Firstly, they can file a lawsuit against you or non-lawsuit. As you will see the later option is highly preferred.
Lawsuit
This is the worst case scenario in which a trademark infringement can be dealt with. A lawsuit will mean that the owner of the trademark is suing you in court. Going through litigation to resolve your case can be expensive, time consuming and stressful. In order for the trademark owner to be successful in a court claim against you for trademark infringement, they will have to prove that they own a valid mark and that the infringing mark was the same or similar and causes confusion in the eyes of consumers. In the event that the court finds that the trademark owner has not provided sufficient information to prove you have infringed their mark, the court may find in your favor.
However, in the event that they do not you may be subject to the following:
1) Issue of a court order (injunction) to stop you from using the infringing mark.
2) Destruction and forfeiture of your infringing trademark.
3) Attorney fees to be paid to the trademark owner.
4) Payment of lost profits incurred due to infringing trademark or punitive damages which the court may impose to punish you for outrageous conduct.
Non-Lawsuit
Cease and desist letters are a way of negotiating with the infringer. It can also be seen as a warning letter before actual litigation. If this is an option used by the trademark owner, our advice is to take it and do not ignore the letter!
Cease and desist letters set out the detail of the trademark infringement, in particular the mark being infringed and against who. It will have a time period in which you have to stop using the infringing mark. So you have to stop using the infringing mark within a certain time period.
Cease and desist letters will ask you to respond. You can get legal advice from a law firm or trademark agents however this is not a requirement. You can write a response yourself at no cost. We advise you to keep all letters of communication. In you letter you can ask the owner of the trademark to clarify anything that is vague in relation to the trademark. For example, you can ask them to provide their trademark, date of first use of their trademark or even trademark details of registration. If your trademark is infringing then inform them that you will remove it. If it is not, ask the owner if you can come to an understanding how both of you can use the same trademark. If you are lucky, the owner may give you a license to use the trademark. The overall, idea is to negotiate and sort out the issue without going to court.
Alternatively, you may feel the trademark owner has no claim against you. This maybe because you feel the trademarks actually are not similar or causing any confusion. In this event you can file a petition to cancel the trademark owners trademark registration with the United States Patent Trademark Office.
So do not make the if or when happen with a claim for trademark infringement. You may have innocently infringed the other persons mark. To prevent this we suggest keeping this in mind: trademark infringement is the unauthorized use of another’s trademark which causes confusion, deception or a mistake about the source of the goods.