How Do I Enforce My Trademark, and What Monetary Damages Can I Get?
If someone is using your trademark without your permission, your first step is to send them a cease-and-desist letter.
The letter provides that person – the infringer – notice of your trademark and demands that use of the trademark stop within a set amount of time (often five business days). A cease-and-desist letter can often lead to settlement discussions in which the parties agree to the terms of authorized use of the trademark - use limited to a particular geographic area, or use governed by a license, for example.
If the infringer is unwilling to stop the unauthorized use, the second step is to file an infringement action under the Lanham Act – the federal statute governing trademarks. Such an action can be filed in either federal or state court.
The most common remedy for trademark infringement is injunctive relief – a court order compelling the infringer to stop using your trademark. Relief in the form of monetary damages is less common. But if you can prove direct injury from actual consumer confusion caused by the infringing trademark, however, you may be entitled to the following types of monetary damages:
- the infringer’s profits from using the mark;
- actual damages sustained (money that would have otherwise gone to you if the infringement never happened); or
- a “reasonable royalty” representing a measure of the trademark owner’s damages through an estimation of the mark’s value.
A couple of important points to note: (1) although it is not required, registering your trademark with the United States Patent and Trademark Office will help proclaim your ownership rights to the wider public, which can potentially help curb infringement; (2) for your claims to prevail in court, you must use your trademark, in commerce, in a public-facing manner.
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