Are you doing enough to defend your trademark?

Trademark Infringement is on the Rise – Are You Doing Enough to Protect Your Mark?

According to a new report, trademark infringement is on the rise. CompuMark’s latest research found that there has been a 15 percent increase in trademark infringement over the past two years.

Spike in Trademark Infringement

CompuMark’s annual report, The Trademark Ecosystem: Global insights into infringement, technology and trademark process, surveyed 351 trademark professionals from both in-house and external law departments across the United States, United Kingdom, Germany, France and Italy. It found that 85% of brands experienced trademark infringement in the past year, compared to 81% in 2018 and 74% in 2017.

When infringement occurred, the repercussions were significant, according to the report. The three most commonly-cited consequences were customer/consumer confusion (45%), loss of revenue (38%), and damage to brand reputation (37%). Three-quarters of the reported trademark infringements also resulted in litigation. In addition, the infringement forced 46% of respondents to rebrand.

The survey also confirmed that trademark infringement often involves more than just a company’s name.  Below are the most frequent types of infringement:

• Business name (44%)
• Web domains (44%)
• Social media (38%)
• Online marketplaces (38%)
• Advertising campaigns (34%)

Protecting Your Trademark Via Registration

Trademark infringement and other misuses of your intellectual property can have a significant impact on your business. Therefore, it is important to have the proper legal protections in place. While businesses can establish rights in a trademark without seeking registration with the U.S. Patent and Trademark Office (USPTO), based on the mere use of the mark in commerce, it is generally advisable to pursue formal registration for a variety of reasons. Just some of the benefits of federal trademark registration include public notice of ownership of the mark; a legal presumption of ownership; the ability to obtain damages for any proven infringement; and the exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration.

More importantly to world-wide brands, a U.S. registration can also be used as a basis to obtain registration in foreign countries. When a business registers a trademark with the USPTO, the legal rights are limited to the United States. Thankfully, it is becoming easier to extend trademark rights to other countries around the world. Defensive registration is extremely important with respect to trademarks, particularly because many countries give priority to the first to file, not first to use. Under the “first to file” systems, trademark rights are generally bestowed on the first entity to file an application. Accordingly, there is incentive for brand counterfeiters and hijackers to pursue trademark rights ahead of U.S. companies.

Lastly, registration with the USPTO gives you the additional help of U.S. Customs and Border Protection (CBP), which can also help trademark owners enforce their rights at U.S. borders. 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. More specifically, the CBP patrols three types of infringement: counterfeit marks; copying or simulating marks; and restricted gray market goods (i.e., parallel imports).

Policing Your Trademark for Infringement

Registration with the USPTO and CBP are only the first steps of protecting your trademark. With infringement on the rise, it is increasingly important to monitor your marks for potential misuse. As discussed more fully in a prior article, businesses can easily do this themselves, i.e. by monitoring the Internet and social media platforms for similar products or marks, keeping track of USPTO filings themselves for any similar marks, or retain a trademark monitoring service.

When trademark monitoring detects potential misuse, it is imperative to take prompt action to investigate whether infringement has indeed occurred and determine the best course of action. In some cases, the infringement can be resolved through a simple cease and desist letter and a potential settlement agreement. However, in many other instances, the filing of a lawsuit is the generally most effective way to resolve the dispute. 

At Scarinci Hollenbeck, our intellectual property attorneys routinely police trademarks filed both domestically and abroad, register respective marks, maintain them, and work with clients to ensure they remain protected. Contact us today to find out how we can help protect your company.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.