Business Bites Episode 92: What if my friend infringes on my trademark?

What if my friend infringes on my trademark?

Episode 92 on the Business Bites Podcast

The Gist Of This Episode:  You registered a trademark because you wanted to preserve your brand and eliminate confusion to the public.  But what do you do if you find someone infringing on your mark? What if it’s a friend or colleague? In this episode, Rachel gives tips you can use to protect and police your trademark even if it’s from someone you know. 

 

What you will learn:

  • Why you have to address infringement instead of letting it go
  • How to police your trademark
  • Things you can do before jumping into a lawsuit
  • When you need to involve an IP attorney to help you
  • and more!

Expand To Read Episode Transcripts

Rachel Brenke: Hey, guys, welcome to episode 92 of the Business Bites Podcast. I am your host, Rachel Brenke, and I can’t believe that we are nearing 100 episodes. The thing is, you would think with this being a short format podcast that you guys were able to consume really quickly because you’re busy entrepreneurs, but so am I, but a lot more goes into it than the 10, 15 minutes that I put out here. But I just wanted to take a second though to thank you guys for sticking with me this long. You can find the show notes and everything for what I’m going to talk about in this podcast at rachelbrenke.com/epi92. And please, please, please, no matter what podcast player you’re on, if you guys could hit pause really quickly and go leave a quick review. I provide these podcasts without any sponsorship. This is 100% freemium information and reviews really do help me to support the podcast, but it also really helps for me to be able to get the knowledge out into the hands of other entrepreneurs, because they don’t know what they don’t know. You guys are ahead of the game because you’ve been listening to Business Bites, but they definitely need it too. So please leave a five star review. Let me know also what you want to see on the podcast, and let’s go ahead and dig into this episode.

Speaker 2: Welcome to the Business Bites Podcast, the podcast for busy entrepreneurs. Whether you’re an online entrepreneur or seeking after brick and mortar success, this podcast brings you quick bites of content so you can learn and grow anywhere you are. Now here’s your host, Rachel Brenke.

Rachel Brenke: Hey, guys, episode 92. We’re going to talk a little bit about trademark. I have a huge episode about this that I did with another intellectual property attorney. I’ll link it in the show notes at rachelbrenke.com/epi92. But, here’s the thing, and that was a big pregnant pause, maybe some music. Not really. For me, I’m excited about talking about this on this podcast episode because the other podcasts we really talked about when you should have a trademark, what having a trademark means. But I really wanted to get to the personal side of being a trademark owner, and what do you do when you find that someone’s infringing upon you? What do you do when one of those people is someone that’s in the same industry as you, there’s potential for backlash? Because maybe the general public doesn’t understand. And I see this all the time, cease and desist are not easily understood and well-received.

And so, what a lot of people don’t realize is that you have a duty to police when you have a registered trademark. And this duty to police goes even beyond ascending cease and desist. You have to actually make sure that the other person stops using the infringing mark, which is the whole point anyways. You’ve got a trademark because you wanted to preserve your brand, eliminate confusion to the public. So if you find someone else infringing, why would you just send a cease and desist and they continue doing the action? What did that accomplish? Absolutely nothing. Right?

And just to let you guys know, and that’s the whole premise of this episode, is that you have a legal duty to actually police and enforce, and it goes beyond that step of setting a cease and desist. But you guys know I have multiple brands, I own many different trademarks and brands, slogans, course names. And it’s very common that people do infringe upon me, because I have positioned myself with the wording for a reason. And it’s because it’s often what someone would logically Google or think about when they’re looking for a certain subject matter. And so, that makes it a really extremely valuable mark.

And I’ve also worked really hard to acquire what’s called secondary meaning. It’s showing that the public has now attributed the use of a common general string of words to a very specific product or service. And so, because of that, and if you have a very valuable mark, you’re inevitably going to run into infringers. You probably wouldn’t want to register something that’s not very valuable anyways. If there’s not a likelihood of someone infringing, having a trademark is just nice to say you have, put the little registered R out there.

But if you’ve definitely figured out that there is a mark that is readily searchable, other people are not using, you know it’s going to put you high in the top of social media searches or search engine optimization, then it’s definitely something you want to trademark and protect. But this element of policing can come as a very difficult thing to approach when, one, you don’t know how to do it, and two, also when you’re looking at situations where it might be someone that is in an industry with you and you are afraid to rock the boat because you don’t know what’s going to be said, but you still have this legal duty.

So, as we’ve already touched on here, you have a legal duty to enforce people to stop using the mark or coming into providing them a license of some sort that you have control over in order for you to be fulfilling that duty. So, yes, you have the option to license your trademark. That’s another way that a trademark can be super valuable, provide some income. But if you’re really wanting to preserve your brand and not dilute the marketplace, and I don’t mean that in a legal way, so if you’re a lawyer listening, but I just mean more from a marketing aspect, you want to make sure that people are actually going to stop.

And so, this starts all the way from setting up your Google alerts, doing routine searches, hiring an intellectual property firm. My firm does this. It’s linked at Rachel Brenke, shameless plug. I have no shame. Absolutely don’t mind throwing it out there. We’re good at what we do. We can try to preserve your brand. And that’s the whole point. But starting with all of those type of search measures, making sure that no one’s infringing, making sure you’re not infringing, all the way through the continued policing of ensuring that no one’s going to pop up.

Now, here’s the problem. You send a cease and desist and they don’t do anything. The infringing party just continues doing the action they’re doing. You could lose your trademark if you don’t stop them from doing it. And this is a bummer, and this is the cost of doing business. And I’ve talked about it in other episodes, budget line items that you should have. I’m going to link all of these episodes that I talk about, as always, in the show notes. But there’s budget line items that a lot of entrepreneurs don’t even think about, whether you’ve been in business a year or you’ve been in business for 20 years. And some of it is this legal stuff. They also don’t think about having insurance if you need to pursue somebody and have legal expenditures that you’re going to make. And guess what, guys. I’m a lawyer. I get it. We’re not cheap. And I don’t want to pay a lawyer either. Probably why I became one. That was a really expensive investment, by the way.

But the thing is you want to preserve that brand and you’re going to have to follow through. So you’re going to come to a fork in the road where you have to figure out if the cease and desist doesn’t work, what do I do now? And you’re looking at potential of having to go into court.

Now, I’m not one of those lawyers that said let’s jump to a lawsuit, unless it’s absolutely needed. Sometimes I think the dispute resolution can happen outside the courtroom. It can be more cost effective, but some situations just demand that you have to be ready for it. And by being ready for it means starting now or starting when you do your application for your trademark, you need to be prepared with a plan. Go ahead and create a relationship with an intellectual property attorney, especially someone who has a longterm business planning sense. Yours truly. But get in and have a relationship with them from the ground floor of the application, the search process, all the way through the maintenance process. But also make sure you have either insurance and/or a savings because it’s not going to be if it happens, it’s going to be when you’re going to have to do something with your trademark, especially if it’s a valuable mark.

So beat dead horse, already really impressed upon you guys to this point. You know you need to be taking those next steps. If you’re maybe sitting here thinking, “Oh my gosh, I’ve sent a cease and desist and nothing’s happening. I don’t know what to do.” Call me. We can talk about it, we can see what’s going on, or find another intellectual property attorney in your area. It’s federal, so you can also ping across the United States to other people as well. So don’t be confined by a state, but just recognize that you definitely need someone that is very specialized in the area because it is a very boutique nuance specialized area of law.

All right, so, got to follow through, cease and desist is not enough. But the real topic, what I wanted to talk about here tonight, and maybe it’s more of a call to action. This is a conversation that I’m going to throw into the Business Bites Podcast® group on Facebook. So this Business Bites, also going to be linked in the show notes, rachelbrenke.com/epi92.

But I want to talk about what do you do when it is someone that you’re familiar with? I won’t necessarily say a friend, but what is it you do when there’s somebody in your industry who is starting to infringe upon you? What do you do? Right? You know that it’s not going to be met with a very welcoming, who welcomes a cease and desist, right? And especially if you’re not a really close friend of them, you can’t have a really good conversation.

The reality… Well, I was going to say the reality should be that we can come to the table and have a conversation like business people. But that’s not typically what’s going to happen, especially when someone’s been building their brand for many years as well. And all of a suddenly start offering products and services and marketing with a very similar business name or course name, which that is what I see most common, is typically not business name. If both of you all have been in business for awhile, but it’s all of a sudden someone generates a book title or a course or a podcast, and all of a sudden it’s infringing and it sucks.

And, obviously, I’m speaking from personal experience here. I’m also speaking primarily from… I had to deal with this with a client this week. The client was infringing upon me, but they were encountering this, that it’s somebody that they were familiar and friendly with in their industry and they didn’t want to rock the boat. And so they’re having to make this choice. How do I decide between potential backlash and fulfilling my legal duty?

And, you guys have heard me say it before, and perhaps I need to emphasize it even more, that as business owners we have a responsibility not just to our consumers to educate, but to one another. The only way that we’re going to elevate our industries is by doing the right legal thing and helping others be educated, even if they’re your competitors, helping them because it elevates all of us.

And so, that is what I would recommend if you’re facing a situation like this, is to approach it in a very business and kind way. Legal action doesn’t have to be this, let me hit you over the head. But if it’s something, there’s a semi question or you think you can resolve it without legal action, of course always talk to an IP attorney to evaluate the circumstances, but see if there’s a way that you can have a gentle education, informative outreach to someone else and seeing what you guys can come up with as a resolution.

Now, the situation that I had for my client is that there was some bad blood there, and so it was very delicate. We were trying to decide how are we going to do a nice friendly outreach and policing, because we didn’t want to jump to an infringement suit yet. But at the same time there was no way to win, there was no way you could send a letter, you weren’t going to win, you can file a lawsuit, you’re definitely not going to win as far as public perception. And so, well we ended up culminating was take up the cross of education, let’s do the outreach, let’s fulfill our policing duties and see it through the end against the infringer. But let’s also get ahead of it a little bit. And this is where I think some of the PR aspects of business really isn’t well discussed. We talk about being our own mouthpiece and marketing and that’s really well understood in social media these days. But oftentimes there are delicate situations where you need to have a PR company or someone to come in and to massage the message for you. And that is what I would advise in a situation like this.

And an attorney that is well versed in PR type management in these type of situations, myself, I am fairly well versed in this. I’ve done this for clients. We could generate a campaign of explaining what’s going on to help cut it off at the pass. We don’t have to name names, but it helps you to get ahead and get your statement out there as opposed to waiting ’til the infringing party comes out the gate with guns blazing. And then you look like you’re on the defense of that point.

So if you’re ever in a precarious position like that, always consider you may need the help of a PR agency and/or a really well versed attorney, not only to represent you on the legal side, but to give you some guidance on how you’re going to inform the public. And, like I said, I think we all have a duty to educate. So make this a learning moment for your audience. Make this a learning moment for your industry. And, obviously, I’m walking a fine line in advising this and recommending this here because you’re going to have to walk a fine line in what is actually said. You don’t want to divulge everything, put more gas on the fire that’s needed, but you want to give enough so people understand the context of what’s going on. And I’m more than happy, if you guys want to share my podcast episodes to educate people on that. This is a legal duty. You have no choice or you could lose the brand that you’ve built your livelihood.

So, this was a nice little recap to piggyback on the other trademark episodes we had, just understand you have to see through your policing to have people stop or else have a licensing agreement executed that you control how they’re utilizing your trademark, et cetera. And then also consider when you’re approaching someone that’s within the same industry, do it from a good heart. You may be upset that they’re infringing, but really try to look at it from a good heart standpoint of educating, elevate in the industry and potentially using a PR rep to help you put out public messaging to help insulate yourself from any potential backlash that may occur.

Now, I hope that you guys never have to utilize these. I hope that no one’s ever infringing upon your trademark. Just know that the Business Bites Facebook group is there to help you, I’m here to help you. So please feel free to reach out if you have any further questions. Again, the show notes are at rachelbrenke.com/epi92, and let’s get our trademark on, our brands protected, and keep moving towards success.

Speaker 2: Thanks for joining Rachel on this episode of the Business Bites. For show notes, a list of recommended tools, or referenced episodes, you can find them at businessbitespodcast.com. Until next time.

Tools & Resources: 

Need to consult an IP attorney?  Reach out to Rachel at her firm Connors & Brenke, PLLC!

About the author

Rachel Brenke is a lawyer, author and business consultant. She is currently helping professionals all over the world initiate, strategize and implement strategic business and marketing plans through various mediums of consulting resources and legal direction.

Hi, I’m Rachel Brenke

Rachel Brenke

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