Stopping a Department Store from Using your Logo

What can i do if a department store is using my company logo?

A large chain department store has used my logo on a t-shirt design that they are now selling at all there store locations and on the internet. My logo was created 3 years ago. It was printed on shirts and has been published on lots of entertainment projects.

You should also document how you found out about this problem. Most of the time, small business owners will learn about situations like yours because one of their customers calls and says "hey, I saw your t-shirt at so-and-so department store -- I'm so glad your expanding." If this is what happened to you, you should document the call in as much detail as you can. If you have a system for recording customer calls, I would keep the recordings (if you don't, be certain to check with your attorney regarding how to properly record telephone conversations). Whenever a customer of yours buys a competitors products, and believe that the product is yours, that is called "actual confusion" (yes, this is a legal term of art for trademark attorneys). Actual Confusion can be very persuasive evidence in a trademark proceeding.

Beyond this first step, your situation is likely to be complex. If this logo has value to you, you should plan to spend a little time with an attorney. There are several possibilities. Trademarks operate at three levels:

1. the Federal level -- throught the Trademark Office registation system;
2. the State level -- through each state's own registration system and state laws; and
3. by action of law -- through rulings of the court.

You may have common law trademark rights and state law trademark rights. (I assume you would have mentioned if you had registered your trademark). These rights may be used to bring a lawsuit against the department store chain. The purpose of this lawsuit may be to get the department store chain to stop and potentially, for money damages, if you can prove a financial loss.

Assuming that you have not registered your logo as a trademark, you will also want to have a sample of each of your products and any sales records for them. In particular, you will want to be able to show your attorney when and where you have been selling your product. Copies of all the advertising that you have done  (including historic copies any of your websites, along with server log files of visitors) can be very helpful in evaluating your situation.

There may be other legal ways to acheive your goals, for example, depending on how you have used your logo (and what your logo might be), copyright laws may apply. There are also laws regarding unfair competition and counterfeiting that may apply to your situation.

What to do next depends on what your business goal is, how you are using your logo, and what kind of outcome you would like to pursue.

Other articles that may be helpful:

• Should you trademark your band name?, March 17, 2009: I know how difficult it is to get a group of musicians to agree on a name. However, most bands should do two things. First, have an trademark attorney do a “trademark clearance” (which will include a professional search). Second, file for a trademark at the US Trademark Office....
• How to Find a Trademark Attorney, March 5, 2009: How do you find a good trademark lawyer? Trademark rights one of the few intellectual properties that can last as long as your business does (forever). So, it makes sense to spend a couple of hours researching and interviewing a couple of attorneys....
• Can I claim trademark to a product I am importing without the manufacturers consent?, March 19, 2009: Foremost, if the US distributor would like the exclusive right to distribute the European manufacturer’s widgets, the US distributor needs an exclusive distribution agreement. Trademarks do not confer the exclusive right to sell products. Trademarks protect consumers from becoming confused about who is selling them stuff. Protecting consumers from becoming confused is the real purpose...