Identify the perfect franchise for you! Take our short quiz Take our free franchise quiz!
Identify the perfect franchise for you! Take our short quiz Take our free franchise quiz!

What Constitutes Trademark Infringement?

source: Sumcensuvitt/Flickr

For brand-centric enterprises (franchise systems included), trademark protection is of utmost importance. If a competitor – knowingly or otherwise – starts using a trademark that interferes with your exclusive trademark rights, this can have significant negative effects for your business. Even if you ultimately prevail in a trademark infringement lawsuit, you likely will have spent substantial sums of money to do so, and potentially lost business and even lifetime customers along the way.

Sure, you might be awarded damages (even triple damages if the trademark infringement is wilful), but (i) you actually have to collect those damages from the infringer, and (ii) it’s difficult to predict with any degree of certainty the true scope of your losses in terms of non-repeat customers and potential customers.

With these concerns in mind, it should be clear that the best way to combat infringement and mitigate its costs is to spot the issues early. So what exactly do you need to look for?

What is Trademark Infringement?

The basic test for trademark infringement is whether someone else is using a trademark that creates a “likelihood of confusion” amongst consumers in the relevant marketplace. At the outset, this means a few critically important things:

  • A trademark does not have to be an exact copy of another in order to be infringing. In terms of protecting yourself, you need to be looking broader than just exact replicas;
  • There is potential for confusion any time two similar trademarks are presented to consumers at the same time – so infringement may occur with respect to products or services that are related to yours, even if they aren’t the exact same, and using even an identical trademark in a completely unrelated area (candy bars vs. architecture services, for example) likely won’t be considered trademark infringement; and,
  • Intent is irrelevant (well, almost): someone can infringe on your trademark rights even if they don’t know that you exist, but wilful infringement might cost the infringer extra.

Of course, someone who uses your trademark won’t be infringing if they have your permission to do so. This permission can come in the form of a license or franchise, and may even be implied where, for example with media buys, someone else needs to use your trademark in order to do what you’ve asked them to. However, subject to the terms of any agreement that is in place, this permission can be revoked, and then if the former licensee continues to use your trademarks they are setting themselves up for trademark infringement liability.

How Do You Spot Trademark Infringement?

The best way to protect your company’s trademarks is institute a comprehensive trademark monitoring program. Sure, sometimes infringement will be obvious, but other times it may be harder to find. In all cases, it is important to respond quickly:

  • The more infringers that are out there, the less likely other potential infringers will take your trademark claim seriously;
  • The more infringers that are out there, the less control you have over your brand image;
  • You can actually lose trademark rights if you don’t police and enforce them adequately;
  • The longer someone goes on using an infringing trademark (especially in close cases and in cases where they don’t know you exist) and establishing themselves, the less cooperative they tend to be when you try to get them to change their name.

A comprehensive trademark monitoring program will scour numerous resources for references to trademarks that are confusingly similar to your own. As noted above, a comprehensive strategy will focus not only on your exact trademark, but on other related terms that may also cause confusion in the minds of consumers.

By taking a proactive approach to combating trademark infringement, brand owners can put themselves in the best position possible to maintain their image, exclusivity, and financial resources.

Jeff Fabian assists business owners in protecting their brands so that they can stay focused on running their businesses. Visit www.fabianip.com for more information, and follow Jeff on Twitter @FabianOnIP.

Determining Your Priorities

At its core the decision to open a franchise isn’t a trivial decision. You are making a serious investment, but if you take all of the factors into account it can be an amazing one. But before you get there you need to sit down, analyze your needs, capabilities and limitations in relation to a franchise business. This could take a few days to consider or a few weeks or months. In either case, it is one of the most important steps in the franchising process, so don’t skip it.

Five Ways Starting a Business Can Affect Your Marriage

Starting your own business can change your life in many ways for the better, but potentially also in some ways for the worse. The lack of stability compared to a 9-to-5 job can lead to new stresses, including those on your existing relationships. These are five ways starting a new business can affect your marriage, or really, your entire family.

A Break Down of Franchise Royalty Fees

When you first start your franchise you typically pay a franchise fee upfront. This will cover a variety of things that depend on the franchise you're dealing with, but often it will go towards initial training, marketing, and the rights to use the franchises logos, names, systems, and products. But that's not the only fee that franchisees will pay to a franchise. In addition to the initial franchise fees, the vast majority of franchises will charge their franchisees royalties that can come in one form or another. These royalties will often go towards ongoing training, sales of goods directly from franchisor to franchisee, and advertising and marketing efforts. The exact terms for these royalties are set out in your franchise agreement, but they come in a few common forms.