Trademark Enforcement
In order to keep your trademark rights in full force, you must 1) maintain your trademark registration by filing renewals, and 2) police and enforce your trademark by finding users of similar marks and notifying them of your exclusive right to the trademark.
Why? If your mark loses its ability to identify you, and only you, as the source of your goods or services, then it no longer functions as a trademark. Aspirin, escalator, and jacuzzi were once trademarks – now anyone can use these words to describe their products.
The Power of Trademark Registration
With a U.S. registered trademark, it usually takes little more than a letter with a copy of the Certificate of Registration to get an infringer to agree to change their infringing branding. Your U.S. Registration establishes your U.S. priority to the trademark and is a stamp of approval indicating that your trademark rights have been examined by government authority (the USPTO) and found to be legally sufficient.
Most infringers, once they consult with counsel, will recognize they have a poor chance of winning a lawsuit against a registered trademark owner, so they will change their infringing branding without a fight.
TIMING: The best time to stop infringers is soon after they start using the infringing trademark. The more time that passes, the more reluctant they will be to change their trademark.
What is Policing and Enforcement?
“Policing” is the process of investigating whether someone else (an infringer) is using a trademark similar to your trademark in a way that affects your trademark rights.
- A third-party’s use of a similar trademark to describe their goods or services is “trademark infringement” if it is likely to confuse or mislead your customers and prospects.
- Other illegal uses of your trademark include trademark misuse and trademark dilution – uses which damage your brand even if technically they are not “infringement.”
“Enforcement” is the process of notifying infringers that you are the registered trademark owner and demanding they stop using the infringing trademark.
When? We recommend searching at regular intervals (preferably monthly) to make sure you catch infringing uses soon, when your chances of getting them to abandon the infringing mark are highest and your leverage the greatest.
Where and How? As for where to search, we recommend searching the U.S. Patent & Trademark Office database (https://tess2.uspto.gov), which contains all U.S. trademark applications and registrations; the Trademark Official Gazette of the USPTO, which publishes trademarks that have been approved for registration but have not yet been registered; and the Internet to identify whether any similar marks have begun to be used.
If your searching turns up any similar marks, the next step is to determine whether the mark located is too similar to your mark to coexist without problems. If it is too similar, then you must notify the infringer of your trademark rights and demand they stop using the mark.
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To help you do your own policing and enforcement, we have put together a FAQ handout on policing and enforcement – find it here.
For even more help, check out our new enforcement subscription packages.
