Can I Protect My Unregistered Brand Name from Infringement?

Question from Jessie, Can I Protect My Unregistered Brand Name from Infringement?

Answer from AI:

If you are a painter in the USA operating under the brand name StalePaints, and you discover another entity using a similar name, “The Stale Paints,” you may be concerned about the potential for confusion and the impact on your business. Even without a registered trademark, you may have some legal recourse based on common law trademark rights.

Understanding Common Law Trademark Rights

In the United States, trademark rights can be established through actual use of a mark in commerce, not just through registration. These are known as common law trademark rights and can potentially protect your brand name if you can prove that you were the first to use it in commerce within your geographic area or market niche.

Factors to Consider for Common Law Trademark Rights

• Proof of Prior Use: You must demonstrate that you have been using the brand name in commerce before the other party. Since you mentioned that your brand is 20 months old while the other is 7 months old, this could work in your favor.
• Distinctiveness of the Brand Name: The more distinctive your brand name, the stronger your claim to common law rights. If “StalePaints” is considered unique to your business, it may be easier to claim infringement.
• Geographic Area: Common law rights are generally limited to the geographic area where the mark has been used. If you and the other party operate in different areas, this could affect your rights.
• Consumer Confusion: You would need to show that there is a likelihood of confusion among consumers between your brand and the other party’s brand.

Steps to Take to Protect Your Brand

1. Gather Evidence: Compile evidence of your use of the brand name, including dates, sales records, marketing materials, and any online presence.
2. Consult with a Lawyer: It’s advisable to consult with a trademark attorney who can assess your situation and advise on the best course of action. They can help determine if you have a strong case for common law trademark infringement.
3. Cease and Desist Letter: If advised by your lawyer, you may send a cease and desist letter to the other party. This is a formal request for them to stop using the name that is causing confusion with your brand.
4. Consider Registration: To strengthen your legal position in the future, consider registering your trademark with the United States Patent and Trademark Office (USPTO). Registered trademarks offer broader protection and are easier to enforce.

Why Legal Advice is Crucial

Trademark law can be complex, and each case is unique. A legal professional can provide personalized advice based on the specifics of your situation. They can also assist with the cease and desist process and represent you in any legal actions if necessary.

Remember, while you may have grounds to assert your rights over an unregistered brand name, the success of any legal action will depend on various factors, including the evidence you can provide and the specifics of trademark law. Consulting with a lawyer is the best way to understand your legal position and options.