With all the time and money that you’ve invested in establishing and registering your trademark, imagine how devastating it would be to have a competitor use your mark with the law’s blessing. If you fail to adequately police infringement, that is exactly what could happen.
Registering your mark is a necessary (but not wholly sufficient) step in forestalling unauthorized use; the other half of the equation lies in the monitoring and prosecution of infringement.
While the courts have not offered a clear answer on whether the failure to prosecute infringement constitutes trademark abandonment, not enforcing your rights will, at the very least, weaken their strength.
Trademark enforcement is the owner’s obligation
To understand the consequences of not policing infringement, you first must understand trademark ownership and its concomitant responsibilities. The Lanham Act imposes on trademark registrants the responsibility of ensuring that no one registers or uses a mark that is confusingly similar to their own. The United States Patent and Trademark Office (USPTO) has also said that the onus is on the trademark owner, not the government, to police infringement.
In a 2011 report to Congress, the Department of Commerce wrote, “Trademark owners have a legal right and an affirmative obligation to protect their trademark assets from misuse.” Similarly, on its site, the USPTO states,
“You are responsible for enforcing your rights if you receive a registration, because the USPTO does not ‘police’ the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark.”
Theories on if failure to prosecute infringement constitutes abandonment
The courts have not issued a bright-line rule on whether failing to police a mark or prosecute infringement is tantamount to trademark abandonment. Abandonment occurs when an owner discontinues the use of a mark with no intent to resume or “when any course of conduct of the owner, including acts of omission as well as commission,” causes the mark to become generic. 15 U.S.C. §1127. Consider the three prevailing positions of the courts on this issue.
1) Failure to prosecute is irrelevant to abandonment
This approach regards evidence of failure to police a mark as irrelevant to abandonment. In other words, a defendant in an infringement suit cannot assert an abandonment defense based on the plaintiff’s inaction toward other infringers. The rationale of the courts who use this approach is that the defending infringer shouldn’t be excused simply because others have infringed on the plaintiff’s mark with impunity.
These courts also justify their position with policy concerns — financially and legally, it is impracticable to require trademark owners to prosecute de minimis infringement. If owners had to prosecute every instance of infringement, they would saturate the legal system and bankrupt themselves with litigation costs.
As the court put it in Engineered Mechanical Services v. Applied Mechanical Technology (1984), “The owner of a mark is not required to constantly monitor every nook and cranny of the entire nation and to fire both barrels of his shotgun instantly upon spotting a possible infringer. Lawyers and lawsuits come high and a financial decision must be made in every case as to whether the gain of prosecution is worth the candle.”
2) Failure to prosecute shows abandonment by making marks generic
This theory holds that evidence of failure to prosecute supports an abandonment defense if the mark owner failed to assert his/her rights for so long that the mark became generic. Evidence of failure to prosecute instances of descriptive use — a newspaper calling generic facial tissue “Kleenex,” for example — may also be probative of abandonment. However, these courts set the bar for abandonment very high, so the owner’s period of non-assertion must be quite long in most cases.
3) Failure to prosecute weakens the mark
The rationale here is that the owner’s failure to assert the mark eventually leads to its widespread use, thereby diminishing its strength. A weakened mark doesn’t necessarily rise to the level of abandonment, but it is a possibility in jurisdictions with this approach. However, these courts don’t expect owners to prosecute every infringer; owners can reserve prosecution for the most harmful cases.
Tips for policing your trademark
While you don’t want to become an unnecessarily litigious trademark bully, you also can’t afford not to police your mark. In the worst-case scenario, your brand will become generic and fall into the public domain, thereby robbing you of all ownership rights in your mark. Less severe consequences might include the inability to enforce your trademark rights against a particular company. Here are a few strategies you might include in your trademark protection and enforcement plan:
- Monitor the database. Regularly check the USPTO’s TESS (Trademark Electronic Search System) Database as well as state databases for applications and registrations of the same or similar marks. The USPTO allows 30 days for owners to object to new federal registrations.
- Monitor the Internet. Periodically search for your mark online to identify and respond to infringement before the infringer is too invested in the mark and your customers are confused.
- Set up a Google alert. A Google alert for your mark will tell you when it is used in news stories or on websites, including misspelled versions of the mark and similar phrases.
- Encourage reporting of possible infringement. Encourage your employees to report possible infringement, and investigate any customer complaints on the matter.
- Contact infringers. Contact potential infringers to let them know of your rights in the mark, and ask them to comply with changing or ceasing the use of the mark. A cease-and-desist letter is a common way of doing this.
- Don’t hesitate to sue when warranted. If you hesitate to act on a serious infringement threat, you might lose your chance to enforce your rights at all. Exhausting other remedies and talking with an attorney can help before commencing with litigation.
Remember that securing trademark rights is only half the battle. Those rights are only meaningful if you actually enforce them. Although you don’t have to file lawsuits indiscriminately against potential infringers, you do have to stay vigilant to spot serious threats to your mark’s distinctiveness. Using the strategies listed above, you can effectively enforce the rights that you fought so hard to secure.