You might have come across lawyers stressing the importance of registering your trademark and talking about how registration will help you avoid infringement. While all that is true, it is hardly the full story. According to the United States Patent and Trademark Office (USPTO), trademark registration numbers are at an all-time high. This surge in trademark applications may be attributed to the rise of e-commerce during the pandemic.
So how does this matter to you as a trademark owner? Well, first of all, the rising number of registered trademarks means there will inevitably be an outpouring of infringing marks. And while you may think that the USPTO would have some level of oversight over such infringers, the reality is that policing your trademark comes down to you as the trademark owner and the diligence of your trademark attorney.
Why You Should Police Your Trademark?
Aside from preventing the use of confusingly similar marks that dilute your brand name, trademark policing is also an important way to show proof of your ownership and use of the mark.
If through bad luck an infringement dispute ends up before a federal court or any other adjudicating body, a history of regular policing against trademark infringement can make a good case for your continued use of the mark.
In any case, policing is an effective way to prevent infringement matters from going that far to begin with. In short, the more you police infringement, the more you show to the world that you are the rightful owner of your trademark.
Trademark Enforcement – Why You Need An Attorney On-Call
As a business owner, it can get difficult to keep track of infringements. After all, you cannot devote all your energies towards refreshing the USPTO’s website if you’re trying to run a business. Having a trademark attorney on-call can help you be alert and responsive whenever someone begins using the mark. This way, any infringement will not impact your workflow as your on-call attorney can be ready with a cease and desist letter to enforce your trademark rights for you.
Steps To Effectively Enforce Your Trademark Rights
Once you’ve determined that a third-party is infringing on a trademark for your goods or services, you need to figure out a strategy on how to get them to stop using your trademark before the matter escalates to litigation. This section will dive into that process.
Trademark Policing & Enforcement Options
1. Cease and Desist Letter
A cease and desist letter is prepared by an attorney and sent on your behalf demanding that the infringer withdraw their registration and cease to use your trademark for goods or services in the market. Usually, a small-time infringer will likely get cold feet after an attorney formally puts them on notice of litigation.
2. Formal Opposition
If a brand owner continues to infringe on your trademark or service mark after the cease and desist letter has been sent, you need to file a formal opposition with the US Trademark Trial and Appeal Board to enforce your rights. This is the first step in getting your dispute on record with the relevant authorities.
Sometimes, a conflicting mark may be something you can live with. Usually, in such cases, the parties either operate in different industries or different marketplaces. At the end of the day, everyone wants to avoid the hassle of litigation.
So, if you’re faced with a commercially irrelevant infringer due to the circumstances highlighted above, your best bet is to settle by signing a co-existence agreement. These agreements allow you to clearly lay out your rights and outline the markets under which you operate so as to avoid any conflicts in the market later on.
If a legal dispute seems more trouble than it is worth, settlement is always something you should consider. For more information on resolving trademark disputes through contractual relationships, check out our blog post on the essentials of trademark licensing.
Opting for trademark litigation as a means of enforcement is a significant decision directly involving you as a brand owner. If you’ve attempted to resolve a conflict, and done everything in your power to reduce escalation while protecting your brand, you, represented by your trademark attorney, may choose to initiate a civil lawsuit against a third party.
This action asserts that the third party’s use of a conflicting mark infringes upon your established trademark rights. The decision to pursue litigation involves various considerations, such as the potential impact on your reputation and the vulnerability of your brand name due to the conflicting mark’s use.
However, it’s crucial to be aware of the challenges and complexities associated with trademark litigation, and how they directly affect you:
1. Financial and Resource Investment: Litigation demands a substantial financial and resource investment from you. The process can lead to extended legal battles, increasing costs, and diverting significant resources, impacting your daily operations and financial stability.
2. Negative Publicity: Legal proceedings can attract negative publicity, potentially affecting your brand’s image. The adversarial nature of litigation may not align with your positive public relations efforts.
3. Uncertain Outcomes: Legal outcomes are inherently uncertain. Courts may render decisions that fall short of your expectations, introducing an element of risk into your litigation strategy.
4. Potential Counterclaims: The opposing party may file counterclaims, further complicating the legal landscape. This demands a comprehensive approach to legal preparedness.
5. Understanding Legal Complexities: Navigating trademark litigation requires an understanding of intricate legal rules, evidence presentation, and evolving case law. Success depends on your ability to effectively showcase the strength of your trademark rights.
In the end, while trademark litigation is a potent tool for brand protection, you must carefully weigh the benefits against the risks. Considering the potential impact on your reputation, financial resources, and overall business operations, a strategic and well-informed approach, guided by experienced legal counsel, is essential for your successful navigation of trademark litigation.
In conclusion, safeguarding your trademark involves more than just registration; it requires vigilant policing and strategic enforcement. The surge in trademark registrations, fueled by the e-commerce boom, brings the challenge of increased infringement. As a trademark owner, the responsibility of policing your mark and ensuring its integrity ultimately rests with you.
Sahil Malhotra is an Intellectual Property Attorney, who founded Drishti (“vision”) law because of his vision in protecting dreams and ideas.
He provided individuals and small businesses with an opportunity to enhance their IP’s value by helping them register trademarks and successfully argue against office actions. In addition to his training and experience, he has been deeply involved in the multifaceted IP portfolio at UIC and continues to be associated with IP organizations and conferences.
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