The PR Adviser: Dear Lilian …

say when I told her what’s going on: “Her issue is a trademark or unfair competition issue, not a copyright issue. Briefly, copyright law protects original creative material such as books, films, visual art and even magazine columns. Trademark law protects one’s exclusive use of an identifier (e.g., branding) for the source of a specific product or service. The trademark-protected identifier can be a word, phrase, design, shape, color and, yes, a tagline.”

To determine whether someone’s use of a similar or identical trademark violates your trademark and whether legal action is warranted, consider the following.

1. Are you actually using your “identifier” in a manner that qualifies for trademark protection? This requires using the trademark in commerce, in connection with offering for sale the business’s goods or service. It’s not sufficient to use the company name, logo, or tagline on company letterhead or business cards.

The aforementioned must also appear on the product or the product’s packaging. If the trademark is used with a service, the trademark must appear with advertising for the service.

2. If you have trademark rights, have they actually been infringed? Just because a business owner has trademark rights, those rights do not absolutely prohibit anyone else from using the same name, logo or tagline.

You can prevent others from using your trademarks only if the other use is confusing. Your exact trademark can be used on substantially different products or in a substantially different industry. That’s why Delta Airlines can co-exist with Delta Faucets and Subaru Outback vehicles can co-exist with Outback Steakhouse.

3. Have you registered your trademark? Registration is not a pre-requisite for valid trademark rights; you instantly develop trademark rights by being the first to use the trademark in commerce in a particular geographic region.

Nevertheless, federal registration of the trademark with the U.S. Trademark Office does provide you with a number of additional benefits, including nationwide exclusivity, increased powers to enforce your trademark rights and eligibility to receive higher damage awards from the infringer with a successful trademark infringement lawsuit.

Without existing already as your attorney, dear designer, Joy isn’t able to make a definitive recommendation. She did add, however, that if your answer is yes to all three questions, you can potentially halt the Goliath’s actions with a cease-and-desist letter, and, of course, by filing a lawsuit.

Check out Joy’s book, “The Cyber Citizen’s Guide Through the Legal Jungle: Internet Law for Your Professional Online Presence,” which includes guidelines for determining your trademark rights and fully annotated examples of completed trademark registration applications.

Keep me posted on your fight. I want to toast with you when you win!

Until next time, faithful readers!

Lilian Raji is a strategic marketing and public relations adviser who helps luxury lifestyle brands sell more products to luxury buyers. Send questions for The PR Adviser to nationaljeweler@lmrpr.com or contact her at lilian@lmrpr.com. Follow her on Facebook, Twitter, Instagram and Pinterest.