How to Report Trademark Infringement

What Is Trademark Infringement?

Trademark infringement happens when similar trademarks promote related goods/services. The result is that consumers are likely to mistake the source of particular offerings. This concept is known as likelihood of confusion, and its existence can be intentional or unintentional.

Infringement can also take the form of counterfeiting. This is a serious form of infringement, where trademarks are copied with the intention of deceiving consumers and/or profiting from the trademark’s goodwill.

Trademark owners typically learn of infringement by conducting regular trademark monitoring, which involves searching the internet to identify cases of misuse.

Do I have to report trademark infringement?

When infringement occurs, it is the responsibility of the trademark owner to take action against it. Responding to infringement is often a requirement of maintaining strong rights in your mark, especially in the case of trademarks federally registered with the United States Patent and Trademark Office (USPTO).

What is the penalty for trademark infringement?

The penalty for trademark infringement depends on numerous factors, including its severity, whether it was done intentionally, and in which venue remedies are sought.

Penalties for proven infringement can include a registered trademark losing its registration, counterfeit materials being turned over to authorities, or listings on a particular website being taken down. In severe cases, money can be recovered as well.

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Reporting Infringement Through the TTAB

The TTAB, or the Trademark Trial and Appeal Board, is an administrative body within the USPTO that handles appeals and disputes related to federal trademark registration. While the TTAB can decide whether a likelihood of confusion exists between the trademarks in question—specifically as it relates to whether a mark can be federally registered—it does not make decisions about infringement, per se.

With this in mind, you don’t exactly “report” infringement to the TTAB. Rather, you can file a notice of opposition to have a trademark’s registration application denied or a request for cancellation to have registration revoked.

While the TTAB is a government agency separate from a typical court of law, it operates much like a regular court. As a result, any filings made with the TTAB should be handled with just as much care and attention as a lawsuit would.

Why file a complaint with the TTAB?

Complaints filed with the TTAB have many overlaps with regular litigation, but they follow a somewhat simplified and more focused process. Because of this, they can wrap up more quickly and may require less funding than a lawsuit.

Monetary recovery is not available through the TTAB, and the agency cannot order the use of a trademark to cease entirely. They look at the viability of federal registration only. If your main goal is to invalidate a pending or actual trademark registration that is causing you harm, a TTAB complaint is a compelling course of action.

Oppose a Trademark Application

Trademark oppositions are filed while an application is pending, before it reaches registration. Once preliminarily approved by the USPTO, pending applications are published in the Official Gazette for 30 days, a time specifically designated for any opposition filings. It’s during this time that most oppositions are submitted, though extensions can be requested.

To file an opposition, you must have both standing (a relevant interest in the matter) and grounds (a valid reason the mark’s registration should be denied). If you believe your trademark is being infringed upon, likelihood of confusion would be a typical grounds for opposition.

Trademark oppositions cost $600 per trademark class to file, and proceedings often take 2-3 years to complete.

Petition to Cancel a Trademark

A petition to cancel a trademark is filed once a trademark’s federal registration is live. Similar to an opposition, a petition to cancel requires the filer to prove standing and grounds.

For those with infringement remedies in mind, likelihood of confusion is a common grounds for cancellation, just like for oppositions. Abandonment or non-use is another common grounds for a petition to cancel—if your own trademark’s registration is blocked by a registered trademark that isn’t actually in use, petitioning to have it canceled is one way to get your mark’s registration back in the game.

Trademark cancellations cost $600 to file, and proceedings typically take up to 3 years to complete.

Reporting Infringement Through Legal Action

Trademark infringement can be dealt with through legal action at the state or federal level. You are not merely reporting infringement via these pathways—you are seeking a remedy for the infringement to stop.

Note: We’re including cease and desist letters here as they typically precede a lawsuit, but it’s important to know that sending a cease and desist letter is not technically a legal action on its own.

Cease and Desist Letters

If you believe your trademark is being infringed upon, sending a cease and desist letter to the infringing party is a common course. A typical letter will detail the infringing action, your demands, and what will happen if the demands are not met.

A cease and desist letter is typically a precursor to filing a lawsuit. However, you do not have to file a lawsuit after sending a cease and desist. The goal of a cease and desist letter is often to get the infringing action to halt without needing to take legal action.

Filing a Lawsuit

Lawsuits for trademark infringement can be filed at the state or federal level. If you have a common law or state-registered trademark, your suing options will end with the state. If your trademark is federally registered, you can sue federally.

Trademark owners who win infringement lawsuits may be awarded an injunction that orders the infringement to stop, monetary damages, and/or attorney’s fees.

Reporting Infringement to Big Tech Companies

If you believe your trademark is being infringed upon on a specific tech platform, you may be able to report it directly to the company itself. They won’t litigate the matter, but they may help delete any infringing material from their site.

Websites where you might be more likely to discover potential trademark infringement include Amazon, Google, Etsy, Facebook, and Instagram. Since these sites host advertisements and/or sales for a wide variety of brands, trademark infringement can seep in.

Each of these companies has their own rules and standards for how to report trademark infringement. But in general, only the trademark owner or an authorized representative (such as the owner’s attorney) can file a report. If the company sides with the trademark owner, a general course of action is to remove the listings or ads that contain the allegedly infringing material.

Here’s an overview of how to report trademark infringement with these big tech companies:

• Amazon: To alert Amazon of alleged infringement happening on their platform, fill out their Report Infringement form. If you have a federally registered trademark, you can also sign up for Amazon’s Brand Registry, which helps automate the identification of potential misuse of your trademark.
• Google: If you believe your trademark is being infringed within an ad that appears on Google, you can submit a complaint that details the alleged infringement. You can also file a complaint if you believe counterfeits of your offerings are being sold.
• Facebook: When there’s alleged trademark infringement within advertisements or sales of counterfeit goods happening on their platform, Facebook allows mark owners (or their representatives) to submit a report. They say “submitting a claim of trademark infringement is a serious matter with potential legal consequences” and encourage trademark owners to try to settle disputes before filing a report.
• Instagram: If you think content on Instagram infringes on your trademark rights, you can file a report. Instagram (and Facebook) also offer Brand Rights Protection. The program must be applied for, but once approved, alleged victims of counterfeit, infringement, and impersonation can request that problematic content be removed.
• Etsy: Before reporting trademark infringement to Etsy, you’ll need to register your brand with the company. From there, you can file a report about the items that you believe infringe on your trademark.

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