Trademark conflicts are going to happen, and more often than not, they are unintentional. Two businesses can start using similar marks in similar industries, completely independently of each other.
Not only is it not uncommon, it also makes sense: certain words and phrases naturally lend themselves to certain industries (an obvious one is PAY for payment processing – PAYPAL, WEPAY, APPLE PAY, etc.). Other times, conflict is a simple coincidence.
Then of course there are those situations when a competitor admires your trademark a little too much and adopts a similar mark for their own use. They may not copy it exactly, but they come up with a mark that captures the same sound or concept as yours.
If you’re not monitoring federal trademark applications with the U.S. Patent and Trademark Office (USPTO), a competitor may be able to register your trademark, even if you have superior, but unregistered, rights. Then you will most likely have the burden of proving, in court, that you indeed own superior trademark rights – just to regain the right to use your own mark.
Below are the average costs to defend a trademark lawsuit, just for attorneys’ fees, broken down by the amount in controversy.
Source: AIPLA 2013 Report of the Economic Survey @ 2013 IP Insurance Services Corp
These figures don’t include any costs related to associated settlements and/or damages. That’s a lot of money spent by both sides to resolve a conflict that could have been easily avoided.
If you catch a conflict early you have options:
- Contact the other party directly and negotiate a simple solution rather than fight.
- Contact the other party directly and instruct them to cease and desist.
- File a petition for cancelation or oppose a mark in the USPTO.
- If options 1-3 fail, then you can take action in court – or at least let the other party know you’re considering legal action if a solution is not found quickly.
If you’re not aware of a conflict until after the federal application has already been approved, the options for “peaceful” resolution may be off the table.
It’s not just about protecting arguably your most valuable asset: your name. It’s about protecting your business and defending your reputation. It’s about lost sales and lost opportunities. A confusing name can lead your customers to a competitor. If that competitor provides poor service, then your confused customers are going to think that your company is providing the poor service, hurting your reputation.
Catching a trademark conflict early is better for everyone. It will help resolve the issue as quickly possible, result in less money wasted in attorney fees and responses to rejections from the U.S. Trademark Office, help avoid building equity in a brand that can no longer be used, and subsequent rebranding costs (have to change websites, signs, logo, business cards, stationery, which could easily total $100k-$1 million).
There are many companies that offer trademark monitoring services. Cognate’s Trademark Monitoringalgorithm monitors new USPTO trademark applications, and alerts you if someone tries to register your mark, as soon as the data is made available. You can monitor a trademark you’re using, one you plan to use in the future, or even the mark of a competitor.