Help! Our Intellectual Property is Being Infringed – An Investigatory Checklist

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I don’t love surprises. Well, if you want to send me a surprise red velvet birthday cake, please feel free. Otherwise, I like being prepared – and infringement of intellectual property is one type of surprise that you can prepare yourself to handle. To assist in that effort, here’s a non-exhaustive list of questions you can ask yourself and your team members, to help determine next steps if you suspect infringement of your trademarks or copyrights. These questions may also come in handy if you find yourself on the receiving end of an allegation of infringement.

About the adversary

  1. Who is the alleged infringer?
  2. Does the adversary have a business or contractual relationship with our company? (If contractual, request a copy of the fully-executed agreement.)
  3. How long has the adversary been using the intellectual property?
  4. In what geographical areas has the adversary been using the intellectual property?
  5. In what media has the adversary been using the intellectual property?
  6. Are they using anything other than our trademark in typed letters, such as a logo?
  7. Are they using any text or photographs created by an employee of our company?
  8. Who are the adversary’s customers? Does the adversary target the same market as our company?
  9. Are there any differences between the adversary’s trademark and our company’s trademark?
  10. Are there any differences between our products and services and the adversary’s?
  11. Is the adversary using our company’s trademark in a domain name?
  12. Is the adversary using our company’s trademark on social media platforms? Which?
  13. Is the adversary using our company’s trademark as part of an email address?
  14. Is the adversary using our company’s trademark as part of a company name?
  15. Has the adversary applied in the United States Patent and Trademark Office or elsewhere to register our company’s intellectual property?
  16. Is the adversary only using our trademark for the purpose of comparing our products or services to theirs? Is the comparison accurate? Do they have proof of accuracy?

About our company and our intellectual property

  1. How long have we been using our trademark?
  2. Is our trademark registered with the United States Patent and Trademark Office?
  3. If unregistered, in what geographical areas has our company been using our trademark?
  4. If registered, what products and services does the registration cover? Have we been using our trademark for all the products and services listed in the registration, and since when?
  5. If registered, does our filing date precede the adversary’s first use of the trademark?
  6. Does our trademark consist of or contain a word that might be considered descriptive or generic, or is our trademark unique and strong?
  7. If the adversary is in another country, is our company’s trademark registered there?
  8. If the adversary has copied text or photographs created by an employee of our company, has our company registered the copyright in those materials?
  9. Has anyone reported that the public is being confused by the adversary’s use of our trademark? If yes, record the dates and other facts relating to reported instances of confusion.

Assuming our company has superior IP rights, the following remedies may be available:

  1. Sending a cease and desist letter to the adversary.
  2. Buy out the adversary.
  3. Filing an opposition or cancellation proceeding in the appropriate Trademark Office (keeping in mind that in most cases, a favorable Trademark Office decision will not require the adversary to cease using the trademark).
  4. Initiating a Digital Millennium Copyright Act notice and takedown.
  5. Filing an advertising challenge with the National Advertising Division of the Better Business Bureau.
  6. Pursuing a domain name dispute resolution proceeding.
  7. Making a complaint to the internet service provider.
  8. Making a complaint to the social media platform.
  9. Filing a complaint with a regulator.
  10. Recording your IP with Customs, and asking Customs to seize infringing goods.
  11. Filing a lawsuit for infringement, unfair competition, false advertising, counterfeiting, and/or breach of contract.

Have we taken all appropriate proactive steps to help counter future infringement?

  1. Do we have a trademark watching service in place covering all relevant jurisdictions? Does it provide time-of-filing notification?
  2. Do we have a program in place to police online trademark and copyright infringement?
  3. Are our brands registered in the Trademark Clearinghouse?

Feel free to get in touch with your usual Faegre Drinker T-CAM contact if you have questions about infringement of your IP, or if you’re being accused of violating someone else’s IP rights.

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About the Author: Jennifer Dean

Jennifer Dean is a leading trademark lawyer who helps companies establish, protect and promote their brands in the United States and globally. Clients entrust her with intellectual property portfolios comprising thousands of trademark applications and registrations, relying on Jennifer’s extensive experience navigating the intricacies of international brand management. Her knowledge of clients’ industries and careful monitoring of the marketplace enables her to act swiftly to avert competitors’ efforts to launch confusingly similar brands.