Trademark enforcement is necessary because trademark owners that neglect enforcing their trademark rights risk losing their trademark rights.
Trademark enforcement can be complicated, especially for small businesses and companies that do not have dedicated in-house trademark counsel or outside trademark attorneys. Whether represented by a trademark lawyer or not, it is important for businesses to diligently enforce their trademark rights because failing to do so can lead to less trademark protection in the future. In other words, if you do not use it, you lose it.
In order to enforce their trademark rights, owners must monitor the marketplace for any other businesses or competitors using the same or similar trademark. If a trademark owner does spot an issue, they have several different trademark enforcement techniques they can use to address the issue.
It is crucial for trademark owners to monitor their industry for use of their trademark or a confusingly similar trademark by another company or competitor. There are two ways trademark owners can monitor their trademarks. The first is to do it themselves, and the second is to hire a third party, such as a law firm or a trademark watch service to monitor their trademarks.
The two best places trademark owners can monitor the marketplace for use of their trademark or a similar trademark are on Google (or other search engines) and the United States Patent and Trademark Office (USPTO) trademark database. Trademark owners should conduct searches online for use of their trademark and in the USPTO trademark database every month or two.
Search Engine Searches - due to the power of the internet, nearly every business has an online presence. Thanks to the need of having an online presence, it is easier than ever for trademark owners to monitor any third party use of their trademark rights. The best way for a company to search if a third party is using their company name or trademark is to put the trademark in quotes in Google, and see if there is any unauthorized party using it by scrolling through the search results. If the results show any websites or social media pages using the trademark in a manner that infringes the trademark owners rights, then trademark enforcement is appropriate.
Monitor USPTO Trademark Applications - trademark owners should also check the USPTO trademark database for any trademark applications filed that incorporate part of their trademark or use the whole trademark. The best way to search for newly filed trademark applications is by using the Trademark Electronic Search System (TESS). TESS allows users to search for trademarks based on the trademark, owner, goods or services, and more. Sine it takes three months after a trademark is filed for an Examining Attorney to review the application, running a proper TESS search every two months will ensure no trademark slips through the cracks. Learn more about TESS in our detailed blog.
Trademark search for EAGLE EYE in connection with "guns." There is one pending application.
Third Party Trademark Watch Service
For some companies and trademark owners, they simply do not have the time to run trademark searches periodically, they forget to do them or they do not know how to properly do a trademark search. In addition, they may not know how to identify what is trademark infringement and what is not. Therefore, they prefer to hire a third party to monitor their trademarks.
If you are looking for someone else to monitor your trademarks, you can contact Granite Trademark Services for a free consultation regarding trademark monitoring services.
If a business or trademark owner comes across a clear case of trademark infringement, it may be best to hire a trademark attorney to handle the matter from the outset. A trademark lawyer will be able to walk a company through the different types of enforcement procedures and discuss the pros and cons of each. In addition, having dealt with many trademark infringement issues in the past, trademark counsel will no how to best approach making a phone call of filing a trademark opposition.
Although the reaction of many trademark owners when they see a third party infringing their rights is to be angry, a friendly phone call may clear up the issue on the other side. It is important to keep emotions in check in business and litigation.
Most of the time a trademark infringement issue occurs, there was no malicious intent and the infringement occurred by a mistake. Calling up a third party that is infringing on your trademark rights, and explaining the issue to them, often makes them more receptive and willing to do the right thing than if they are blindsided by a cease and desist letter or lawsuit drafted by an attorney. Not to mention it is much cheaper to make a phone call than hire an attorney to file trademark litigation.
A phone call is a good way to begin a discussion to try to get an trademark infringer from stopping using the trademark. However, sometimes that is not enough, and it is important to step up the enforcement effort.
Cease and Desist Letter
If a phone does not work, or if the trademark infringer is a competitor that knows about your trademark rights, a cease and desist letter may be the way to go. In the cease and desist letter, it is important to explain the rights you have in the trademark, why you believe they are infringing your rights and requesting the “cease and desist” all use of the trademark or the confusingly similar trademark.
Often time the trademark infringer will stop using the trademark upon receipt of the letter and not even reply. It is important to continue monitoring the company, though, in case they begin using the trademark at a later date.
Example of Start of a Cease and Desist Letter
When a trademark owner sees a trademark application filed that, if registered, would harm their trademark rights, they should strongly consider filing a trademark opposition. Before filing the opposition, it is worthwhile to reach out to the other side and request they abandon their trademark application or you will file an opposition. Often times, companies rather avoid litigation over a trademark and will accept abandoning their trademark rather than fight the issue.
However, if the other side continues with the application process, it is important to timely file the opposition or an extension of time to file the opposition. If you miss the opposition filing deadline, it becomes much hard to cancel the trademark after it registers.
Filing a trademark opposition is fairly complex, and most likely you will receive the best results if you hire a trademark attorney. Learn more about opposition filings in our blog post.
Federal Trademark Infringement Lawsuit
Filing a federal trademark infringement lawsuit should be the last resort when confronting a third party that is infringing your trademark rights. The reasons why it should be a last resort is that it is costly, timely and results are not guaranteed. However, in situations where the infringement is so egregious, there is no other option.
Do Not be a Trademark Bully
One last consideration when enforcing trademark rights is to stop before any call or cease and desist letter is sent and ask “If I send this, am I being a trademark bully?” Once a company is tagged as being a trademark bully, it is hard to shake that label. It can lead to bad press in the media and negative comments and reviews online and in social media. For example, VICE MEDIA and LOUIS VUITTON are now regarded by many in the trademark industry as bullies. Whether that is fair or not, the perception is out there. Learn more about trademark bullies in our full blog post on the topic.
Do you need help enforcing your trademark rights but do not think you have the money to hire a trademark attorney? Reach out to us today for a Free Trademark Consultation and we will do our best to work with you to help solve your trademark enforcement issues at a price you can afford.
DISCLAIMER: nothing in this blog is intended to be legal advice.