What can be done if artwork being used without permission? 4 Answers as of January 17, 2011

We applied for a trademark a few years back on the name Samurai Precision Burs. We got it - but did not know that another form had to be filed saying that we were actually using the name. Another company took our name - because we did not file the additional paperwork. Upon perusing their website - we noticed that they are using our artwork as well.....without permission. By this I mean - instead of an actual picture of the "Samurai Precision Bur" we used a graphical representation of the bur. On the representation it had "SP-48". This has nothing to do with the trademark....it was my husbands initials and his age at the time. We had a person design this for us. Also the way the name was laid out - was designed by me. They are using this as well. Is this legal? If not what should be done. Thank you in advance for your kind assistance with this matter.

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Fish & Associates, PC
Fish & Associates, PC | Robert D. Fish
There are several issues here. First, most trademark rights accrue from usage, not registration. Thus, even though your application for registration apparently went abandoned, you may still have superior trademark rights as against the competitor. You could, for example, even file a new trademark application on the mark. Remember, you don't file for a trademark, you file to register a trademark.

If indeed you have superior trademark rights you might be able to force the competitor to stop using that mark whether or not you ever get a registration on the mark. Filing a new registration application should be inexpensive.

Our office usually charges $500, which includes the filing fee but no search. We usually charge another $500 for a search. Second, the artwork is already copyright. Here again, you don't file for a copyright (at least not anymore); you file to register the copyright you already have.

On the other hand, you do need to secure a copyright registration if you want to pursue the competitor for copyright infringement. Copyright registration is also inexpensive. $50 per work or compilation for paper filing, and $35 per work or compilation for electronic filing. The main tricks are (1) to make sure the entity registering has the rights, (2) determine whether the work is authored by an individual or by a company as a "work for hire", and (3) make sure non-protectable portions are disclaimed. Go to http://www.copyright.gov/ . Or you can go to an attorney to get the filing done, which should cost about $150 per work or compilation.
Answer Applies to: California
Replied: 1/17/2011
Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
Complicated issue but you can sue and can stop them from using the trademark as well. If you are interested call me (mark Hubert) at 503 234 7711 and we can discuss further.
Answer Applies to: Oregon
Replied: 1/14/2011
Handal & Morofsky LLC
Handal & Morofsky LLC | Anthony H. Handal
Even though your registration has lapsed because you did not file proof of use, you probably still have very substantial trademark rights. Likewise, it appears that the other company is using photographs of your product to sell their product. This is also a violation of the Lanham Act, and is a relatively easy claim to make. You probably also have a copyright claim for use of your pictures.All in all, it looks like these people have put themselves in quite a vulnerable position. However, keep in mind that you need to act promptly otherwise a court may discount your claim.
Answer Applies to: New York
Replied: 1/13/2011
DANIEL NESBITT
DANIEL NESBITT | Hasse & Nesbitt
Quite a complex set of facts! I suggest you engage (employ) a copyright or other IP attorney.
Answer Applies to: Ohio
Replied: 1/12/2011
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