A company’s brand names, logos, and designs are often among its most valuable assets. In addition to securing federal trademark protection, it is critical to monitor for potential infringement and, when necessary, take action to enforce your trademark rights.
Monitoring Your Trademark
In order to maintain exclusive rights in a particular mark for your specified goods/services, you must police your registered mark. You can either subscribe to a trademark policing service or perform searches for potential infringement in house. If you plan to monitor your trademark, below are several actions you can take:
- Search the Internet, social media, and mobile applications for trademark infringement;
- Set up a Watch Notice to review the USPTO’s official gazette for third-party trademark applications;
- Monitor the USPTO’s TESS Database for trademark registrations; and
- Set up a Google Alert to search for your mark online.
Filing Opposition/Cancellation Proceedings
Trademark applications are published for opposition before they can be registered on the Principal Register. Trademark owners who believe that they would be damaged by the registration of a mark may file an opposition against that application. Trademark owners may also seek to cancel an existing registration of a trademark if they believe that they would be damaged by the registration.
In basic terms, any ground that negates the defendant's right to registration may be raised for either opposition or cancellation. The most common ground is that a likelihood of confusion exists between the trademarks. Opposition and cancellation proceedings are conducted by the Trademark Trial and Appeal Board and can involve complex legal issues.
Registering with U.S. Customs and Border Protection
The U.S. Customs and Border Protection (CBP) can help enforce your trademark rights. The CBP recognizes three levels of infringement in its enforcement of trademarks: counterfeit marks; copying or simulating marks; and restricted gray market goods (i.e., parallel imports). After you have recorded your federal trademark registration with the CBP, agents can detain and seize imported goods that violate intellectual property rights in the United States.
Sending Cease-and-Desist Letters
Under U.S. trademark law, rights are determined according to which party adopted and used the mark in commerce first in connection with a particular set of goods and/or services. That being the case, it is important to conduct an investigation to confirm use dates prior to taking any legal action.
When trademark misuse is found, a cease and desist letter can be an efficient way to resolve it. A cease and desist letter, or “C&D” as you may have heard, is intended to put the receiving party on notice that you believe they are committing an illegal act. It also advises that if they do not stop, you plan to take legal action.
Filing Trademark Infringement Litigation
In some cases, filing a lawsuit is the most effective way to resolve a trademark dispute. Under the Lanham Act, the holder of a registered trademark may file a trademark infringement claim against any person who, without the registered trademark holder’s consent, (1) uses any reproduction, counterfeit, or copy of a registered mark; (2) in commerce; (3) in connection with the sale, offering for sale, distribution, or advertising of any goods or services; (4) where such use is likely to cause confusion, or to cause mistake, or to deceive.
To determine whether the defendant’s use of the mark has created a likelihood of confusion, courts consider some combination of the following factors:
- Strength of the trademarks;
- Similarity of the marks;
- Proximity of the products and their competitiveness with one another;
- Evidence that the senior user may “bridge the gap” by developing a product for sale in the market of the alleged infringer’s product;
- Evidence of actual consumer confusion;
- Evidence that the imitative mark was adopted in bad faith;
- Respective quality of the products; and
- Sophistication of consumers in the relevant market.
Key Takeaway for Trademark Owners
While registering your trademark has significant benefits, you can’t simply “set it and forget it.” If you fail to monitor for potential misuse of your mark, you may lose rights. To determine the best course of action to protect your mark, it is always advisable to consult with an experienced intellectual property attorney.
If you have any questions, please contact us
If you have any questions or if you would like to discuss the matter further, please contact me, William R. Samuels, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.