24. How does an individual enforce Trademark Rights?
If a claimed trademark (that is in commercial use) conflicts with another, the method or ability to enforce the trademark will vary depending on the rights associated with the mark.
• State Law Rights – States that allow for trademark registration often establish procedures and causes of action for enforcing trademark rights against infringers. In the absence of a state statute, common law rights in a mark can be enforced within the jurisdictions in which it is actively used. If the businesses are geographically separated, it may provide a buffer of protection against infringement. Recall, a business may use a mark in a jurisdiction where the similar mark is not used in commerce. In the event of an conflict in the same jurisdiction, the cause of action may be pursuant to a state conversion or equitable remedy. A court may award damages or an injunction against further infringement. To recover damages, a plaintiff must demonstrate actual damages. These actions are filed in state trial courts and are entitled to the same procedural rights as other state-law actions.
⁃ Note: This can be difficult for businesses that provide services over the Internet, as the reach is likely to be national.
• Federal Registration – A federally registered mark can be enforced throughout the United States. Enforcement of a trademark generally begins with a “cease and desist” letter. This letter is a communication sent by the owner of a mark to the user of an allegedly conflicting mark demanding the user stop using that conflicting mark or stop using it in the current manner. If the user of the infringing mark fails to comply with the demand, the next option is to either file a state or federal court action seeking to enjoin the infringement. The complaint will allege a violation of federal law. The plaintiff may request any damages she has suffered as a result of the infringement. Federal infringement actions involving a registered mark allow for the recovery of attorney’s fees incurred in enforcing the trademark.
• Discussion: What do you think about the methods of enforcing trademark rights under state and federal law? Are there advantages and disadvantages of each method?
• Practice Question: Raymond uses a mark to represent his business in Tennessee and Virginia. He previously filed for federal protection with the US Patent and Trademark Office. He recently learned that another business in Tennessee is using a confusingly similar mark to represent its business. Raymond believes that this third party is infringing upon his trademark. What are Raymond’s options for bringing a state or federal lawsuit against the alleged infringer?