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Trademark Infringement

A trademark is a form of legal protection that enables an individual, business, or corporation to claim rights of ownership over a specific symbol, mark, or expression used by an entity. The trademark designation grants a business the exclusive legal right to utilize these marks in a way it deems appropriate, while prohibiting competitors and other entities from using the symbol or mark in any way. Once rights to a trademark are officially established through the trademark search and registration process, the property’s owner is authorized to label the symbol “TM.”

Trademark Lawyer Chicago

The Chicago IL law firm of Roth Fioretti has extensive experience in intellectual property law, specializing in trademark maintenance, defense, and litigation. Trademark infringement, or the unauthorized use of a protected trademark, confuses customers and erodes business. To protect your business and its trademarks, our attorneys assist with all trademark protection issues, including trademark maintenance, enforcement, agreements, and litigation.

Trademark Infringement and Enforcement

The owner of a trademark has the right to legally enforce its mark if another business attempts to steal it or use it for gain. To enforce its rights against trademark infringement, there are several legal steps a trademark holder may take. In most instances, submitting a cease and desist letter to the infringer is the first and only legal action the trademark owner will need to take. This letter offers legal proof showing when and with what organization (such as the United States Trademark and Patent Office or the Illinois Secretary of State) the trademark was established. Typically, the infringer will comply and no further action will be needed. However, if the infringer persists, the trademark owner has the right to move forward with a civil suit.

Roth Fioretti offers representation to both plaintiffs and defendants in trademark enforcement matters. From drafting cease and desist letters to negotiating trademark conflicts to intellectual property litigation, our team of lawyers can help defend your right to use trade and service marks.

Trademark Agreements and Assignments

In some instances, businesses work together to share trademarks. One company may grant another the right to use a mark for specific purposes, as in the following cases:

  • A franchiser grants permission to a franchisee to use a business identity for marketing
  • A company allows a merchandiser to create new products using trademarked images
  • A subsidiary company brands product with the parent company’s logo

These agreements are called “license agreements,” and they contain very specific terms. There are many considerations in drafting license agreements, such as whether the license is exclusive or non-exclusive, the territory and products for the license, royalties in exchange for the license, etc.

License agreements should not be confused with a trademark assignment. When a trademark is assigned, a new owner takes possession of the rights to the mark. This happens when business ownership changes or when a new business negotiates the purchase of a trademark.  Assignment agreements must also be in writing. An assignment must transfer the goodwill in the trademark in order to be enforceable.  Trademark assignments are recorded with the United States Trademark Office.

Our firm assists clients with drafting trademark license agreements and assignment contracts. These contracts are critical to ensuring future enforcement of trademark rights.

Trademark Maintenance

Trademarks require ongoing maintenance to keep mark protections valid. To fulfill trademark maintenance requirements, trademark owners must:

  • Periodically renew: Every ten years, the trademark owner must renew its protection with the USPTO. The USPTO requires the owner to submit a statement listing all the products sold with the trademark logo, along with an image of the mark and the necessary fees. Similarly, international trademarks registered through the World Intellectual Property Organization (WIPO) must also be renewed every ten years. Illinois trademarks are valid for five years, and must be renewed by filing a Form TM/SM-30, Illinois or Service Mark Renewal Application.
  • Submit other required filings: The USPTO also requires trademark owners to file a Declaration of Continued Use or a Declaration of Excusable Nonuse during 5th and 6th years after trademark registration. Failure to file these forms timely may result in cancellation of the trademark. Trademark owners may also consider filing a Declaration of Incontestability, which provides additional evidence in trademark infringement litigation.
  • File cautionary notices: Used in some foreign countries, these notifications inform third parties of trademark ownership and warn against unauthorized use.

Trademark maintenance deadlines and forms are onerous, but failure to properly maintain your marks could result in the cancellation of your trademark rights. Roth Fioretti is one of the best trademark law firms in Chicago, ensuring our clients stay ahead of and comply with all trademark maintenance items.

Trademark Litigation

With some of the best-reputed trademark lawyers in Chicago, Roth Fioretti has assisted many businesses with matters of state, federal, and international trademark infringement. Whether defending against infringement claims or enforcing trademark rights, our team of intellectual property experts will guide you through the trademark litigation process. Our practice has won clients millions of dollars in civil intellectual property suits, and represents clients in proceedings before the Trademark Trial & Appeal Board.