You’ve gone through the expensive and time consuming process to protect your photography business marks. Now it is time to protect it!
Here is the process for you to protect the trademarks you’ve registered for your photography business.
What can I do to protect my mark?
Use it! Properly identify your mark’s status by using the ® and ™/℠ symbols. Once you know what mark you will be using, register the domain name (even if it’s just to put a holding page up as a website for now) and check out various social media outlets (Facebook/Twitter/Flickr/etc.).
What can I do if someone else infringes on my trademark?
First we need to mention priority. This is a legal concept which means that whoever is using the mark first generally has superior rights to it. However, if you’re only talking about common law rights (versus registered marks) there can be some leeway. That’s because common law rights generally only exist in the area in which you’re actually using the mark. So if you’re a photographer in NYC using the name THE SNAPPY SHUTTERBUG and you find out that someone in Texas or LA or Oklahoma is using the same name, barring a registration there might not be much you can do.
If you know you have priority, you can send a cease and desist, but there is definitely a legal argument to be made that since you are operating in such vastly different local areas there is room for both parties to use the same name, regardless of who used it first. Note that the legal argument is harder to make for a similar photographer in Connecticut or New Jersey because of their physical proximity to NYC. A federally registered mark, on the other hand, covers the entire U.S., so you would have a stronger legal argument to get them to stop using the mark.
So let’s say that you have a federal registration for your mark and you find out someone has been using that name or a similar name. What can you do? The first step is generally sending a cease and desist letter. You can find samples on the internet (or purchase one in the shop). You can send one yourself, or you can hire an attorney to do so. The recipient may take it a little more seriously if it comes from a lawyer, but people sending it themselves can also have successful outcomes. If you’re talking in particular about a website and they won’t take down the site (or sell/give you the domain), your best bet is to file an action against them in court (or convince them to go to arbitration). If you have a court order or arbitration award you can use the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) to get the domain name registrar to suspend, cancel or transfer the offending domain name. (There is an expedited process for cases of abusive registration but that is outside the scope of this post.) There is also an expedited process called the Uniform Rapid Suspension System (“URS”) involving the new generic top-level domains (gTLD’s).
It’s important to keep in mind the test that a court will use to find infringement. It’s called the likelihood of confusion test (or the DuPont standard) and involves several factors. These include:
(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
(3) The similarity or dissimilarity of established, likely-to-continue trade channels.
(4) The conditions under which and buyers to whom sales are made, i. e. “impulse” vs. careful, sophisticated purchasing.
(5) The fame of the prior mark (sales, advertising, length of use).
(6) The number and nature of similar marks in use on similar goods.
(7) The nature and extent of any actual confusion.
(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
(9) The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).
(10) The market interface between applicant and the owner of a prior mark:
(a) a mere “consent” to register or use.
(b) agreement provisions designed to preclude confusion, i. e. limitations on continued use of the marks by each party.
(c) assignment of mark, application, registration and good will of the related business.
(d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.
(11) The extent to which applicant has a right to exclude others from use of its mark on its goods.
In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
The court will look at all the factors and make its determination on whether there is infringement. Once the court finds that you can ask for an injunction which would legally stop them from using the mark. You may also be able to get damages, disgorgement of profits, costs and possibly attorneys’ fees in exceptional cases.
What if someone is sitting on a trademark but not using it?
Because a trademark is a source identifier for goods or services, it must be used in order for the owner to retain the protection afforded by either the common law or a state or federal registration. (This is unlike copyrights and patents where your rights are time-dependent and not use-dependent.) If you stop using a work for a period of time (typically 2 years but it can be shorter or longer depending on the situation) you can be deemed to have abandoned the mark and others can start to use it.
How can you determine whether someone is “sitting” on a mark? With photographers that’s probably as easy as calling and seeing if they’re still in business. Are they taking new clients? Are they still doing work for old clients? Have they gotten out of the game altogether? Have they changed their name to something else?
If there is no state or federal registration, you can determine that they’re no longer in business, and it’s been at least 2 years since they stopped using the mark, it may be safe for you to use it. (Obviously this is not legal advice and you should consult an attorney regarding your specific situation.)
If there is a state or federal registration but you know the mark has been abandoned, you can petition either the state registration authority or the USPTO to cancel the mark. Once the mark is canceled, and if you can determine nobody else is using the mark, you’re probably safe to start using it. (Again, this is not legal advice and you should consult an attorney regarding your specific situation.)