You have evaluated someone’s use of your trademark or copyright-protected work and believe it constitutes infringement. It is now time to consult with your intellectual property lawyer.
Preparing ahead of time will make your initial contact with legal counsel more efficient. The questions you have already answered for yourself are usually the ones an intellectual property lawyer will ask, so you should bring all evidence of the infringement you have found to your meeting.
For Potential Copyright Infringement: you should bring the copyright certificate of registration that you received from the U.S. Copyright Office for the particular work. If you do not have one, bring documents establishing the date the material was first created along with evidence of first date of publication. You will also want to gather evidence that proves the infringing party had access to the original work and that the two works are substantially similar.
For Potential Trademark Infringement: you should bring printed copies of your trademark registration, evidence of the first date you used your trademark in commerce, evidence on how the infringing trademark is being used in commerce, data pertaining to how the products or services are similarly marketed, and/or photos of the physical proximity of goods in commerce (e.g., retail store shelf, website pages, vendors exhibits at tradeshow)
Your intellectual property attorney will assess the materials you have provided, offer their opinion about whether infringement has or is occurring, and then recommend possible next steps. In the third part of this series, I will discuss what legal actions you may want to take with your attorney’s guidance.