In the business world, a trademark can be one of your most valuable assets. It’s what separates your company from others in your industry and can help you build a strong brand reputation. However, trademarks can also be devalued if they’re not properly protected. In this blog post, we’ll show you how to enforce your trademark and maintain its value. Thanks for reading!
There are ways a trademark owner can enforce their trademarks effectively and efficiently. It is important to remember that the burden to enforce a trademark’s right is on the owner and each unauthorized use by a competitor devalues your brand.
These strategies will help you manage your brand’s image and overall perception.
There are two Basics
Getting a trademark registered is a long journey from application filing to actual registration. Beyond registration, you must implement a sound enforcement strategy that includes diligence in policing and monitoring. Not doing this could mean someone uses your trademark without permission which could lead to losing your trademark or the rights to it.
The idea is to increase the strength of your trade trademark. Getting registered is the first step but you need a holistic approach that continues to protect your brand from infringement.
Monitoring of trademarks
One of the most overlooked and undervalued parts of our brand management strategy is the emphasis on the monitoring of trademarks. Although registration protects your brand, the lack of proper policing or monitoring will lead to the devaluation of your brand by competitors or bad faith actors.
A trademark owner can monitor trademarks in multiple ways:
- You can monitor the USPTO Trademark Gazette. The USPTO provides access to an official gazette published weekly that lists all the applied-for marks that have been published for opposition. The USPTO also provides a searchable database of trademark applications and registrations. Although, this can be time-consuming and inefficient in the hands of an inexperienced searcher.
- Employ a search or monitoring service. A competent trademark attorney will be able to review and analyze your brand’s risk exposure and provide ongoing reports of potentially conflicting marks. A simple Google alert is beneficial to any brand, but a quality third-party vendor will provide a comprehensive report. It can be time-consuming to search and monitor unregistered marks and marks in multiple jurisdictions, including foreign databases. This process can be streamlined through an industry-leading search and monitoring service. These services usually monitor the registered and dead trademarks, pending applications in multiple jurisdictions, common law usage (which means state and county records of businesses), and any online presence. It could be websites, social media channels, and much more.
Enforcement comes in many forms.
1. The topmost one I always tell my clients is patience. It is often unnecessary to go after every conflicting usage, but this strategy should be used case by case rather than as a blanket approach. Every situation has its particular intricacies that need consideration before you decide how best to go after your opponent in court or otherwise act on their behalf.
2. The second way to enforce your trademark rights is to send cease and desist letters. This is a common first step in enforcement strategy. The letter should focus on:
- informing the infringer about your trademark rights
- putting the infringer on notice of his infringement
- requiring the infringer to change or alter the use of the infringing mark
- an implied or explicit threat of legal action if the mentioned concerns are not resolved.
The tone of your letter should be based on how strong your case is. The stronger your case, the more aggressive the tone you can use. When you are writing a letter, it is important to think about what the other person might say in response. This is why it is important to be firm but polite when making demands in a cease and desist letter.
A. An opposition or cancellation proceedings: The USPTO must refuse a pending trademark application if the applied-for mark is the same or confusingly similar to an already registered or previously applied-for mark in connection with the same or related goods and or services. Opposition Proceedings: Often, an examining attorney will not catch all possible conflicts, and a potentially harmful application to your brand might be published for opposition. In this scenario, a potential opposer has 30 days from the data publication and the official gazette to file an opposition. Extensions to file an opposition are often available and potential opposers can get extensions ranging from 30-180 days only for good cause. cancellation Proceedings: This option is available when an application proceeds with your registration. A petition to cancel the mark registered on the principal registration must usually be made within five years from the date of the registration. This is usually a proceeding before the trademark trial appeal board, but a federal court also has the power to cancel a registered trademark.
3. Federal lawsuits, the trademark infringement lawsuit. When cease & desist letters, TTAB proceedings, and all other enforcement strategies have been exhausted, it is often necessary to engage in federal litigation. The cost and length of this process are dependent on the complexity of the case.
Trademark registration is the first step in your brand-building journey. You must protect the rights associated with your trademark as important as it is to be proactive and utilize an efficient monitoring process. Once a potentially conflicting mark is identified, you need to execute a coherent enforcement strategy.
As we’ve seen, trademark enforcement is key to preventing the devaluation of your brand. By being proactive in monitoring your trademarks and taking swift action when infringement occurs, you can protect both the value of your mark and your bottom line. If you have any questions about how best to enforce your trademarks or would like help setting up a process that works for you, please don’t hesitate to reach out. We’d be happy to schedule a discovery call and discuss how our team can assist you in protecting your valuable intellectual property.
If you have any questions about trademark monitoring or enforcement and would like help getting a better understanding of it, we’d be happy to schedule a discovery call with you. During this call, we can discuss your situation in more detail and come up with a plan tailored specifically for you.
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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.
To know more about Sahil Malhotra — Click Here