If trademark owners neglect enforcing their trademark rights, they risk losing the ability to enforce their rights in the future.
If You Snooze, You Lose
Trademark owners who do not enforce trademark rights against infringers risk losing the ability to enforce their rights in the future. One way a trademark owner can lose rights by failing to enforce their rights is if many infringers adopt the same or a similar trademark in the field, it becomes too crowded to clear. In other words, the trademark is no longer distinctive because so many other people are using the same or a similar name.
The other way a trademark owner can lose the right to enforce their trademark rights is by “sleeping” on their rights. For example, if a sportswear company uses NIK-EE as a trademark for twenty years before NIKE tries to sue them for trademark infringement, NIK-EE can claim “laches” as a defense, i.e. NIKE waited to long to bring a trademark infringement case.
There are several different enforcement strategies companies can take when enforcing their trademark rights such as simply making a phone call or filing a federal trademark infringement lawsuit.
The cheapest and sometimes the most practical trademark enforcement technique is simply calling the alleged infringer and see what is going on. Often a company or third party that infringes on trademark rights does so without knowing. Usually because they did not conduct a trademark clearance search before adopting and using an infringing trademark.
A friendly phone call from the trademark owner, or their trademark attorney, explaining your trademark rights, why the use of the infringing trademark is an issue, and requesting they stop using the trademark as soon as commercially possible can get a positive result. However, in some instances the trademark infringer may push back because they do not understand trademark rights, think the trademark owner is wrong, is emotionally attached to their infringing trademark or any other reason. In those cases, ramping up the enforcement technique is recommended.
If you want an attorney to make the call for you, contact us for a free trademark consultation today!
Cease and Desist Letter
If a phone call does not stop the trademark infringer, then sending a cease and desist letter outlining the issue, why a company has superior trademark rights, and requesting the infringer cease and desist all use of the infringing mark is the next common step. It is important to get the issue into writing to prevent a laches defense in the future. The cease and desist letter should also include relevant details about any phone conversations between the two parties, how the infringing trademark use came to the right trademark owner’s attention and more.
When it comes to drafting, preparing and sending a cease and desist letter, it is possible to do so without a trademark attorney. However, for best results and to avoid any potential pitfall, it is wise to hire a trademark lawyer to prepare and send the cease and desist letter. There also is instantly credibility when a cease and desist letter is sent on an attorney’s letterhead that shows the alleged infringer the matter is serious.
For a free consultation about our Cease & Desist Letter Services, visit our page here.
Trademark Trial and Appeal Board Proceeding
One common area that trademark owners encounter trademark issues is by monitoring trademark applications filed at the United States Patent and Trademark Office (USPTO). Whenever a trademark application is filed with the USPTO that is problematic, it is important to track the application and file a Trademark Opposition with the Trademark Trial and Appeal Board (TTAB) during the thirty day Opposition Period. Failure to timely file an Opposition will force a trademark owner to file a Cancellation proceeding with the TTAB after the trademark is registered. Cancelling a trademark is more difficult than nipping an application in the bud during the Opposition period.
Filing Oppositions or Cancellations are hard to do pro se, i.e. without an attorney. Attorney costs can add up quickly the longer a case goes on. Often times it makes sense to file an Opposition or Cancellation as leverage for a settlement. If you have any questions about Oppositions or Cancellations, contact us for a free trademark consultation.
The most aggressive and expensive trademark enforcement mechanism is filing a federal civil lawsuit against the alleged infringer. Trademark infringement lawsuits can be filed in any federal court based on provisions within the Lanham Act that make trademark infringement a civil cause of action.
Federal lawsuits are timely and costly. Before filing a federal lawsuit, a company should consult trademark attorneys about the likelihood of success, what the goals are, and if there is any possible settlement that is acceptable.
There are several different ways to enforce trademark rights with different costs and benefits associated with them. If you believe there is someone infringing your trademark, feel free to contact us for a free trademark consultation and we will help devise a strategy to stop the alleged infringer.