Once your trademark is registered with the United States Patent and Trademark Office (USPTO), it is vitally important to take action against any potentially infringing uses of your trademarks. Early detection of potential trademark infringement is critical because the failure to properly defend your trademark rights could lead to a loss of distinctiveness, which is one of the most valuable business assets in the market. The failure to properly defend your trademark against trademark infringers could diminish the strength of your trademark, and may even result in abandonment or cancellation of your registration. In the post below, we’ll outline the rights you have as the owner of a trademark, the reasons why monitoring and enforcement are important, and how to develop an effective trademark monitoring and enforcement plan.
Trademark Rights and Protection
Your rights as the owner of a trademark extend to marketplaces, both physical and digital, ensuring your products and services are uniquely represented. Trademark law in general protects a trademark owner’s commercial identity (goodwill, reputation, and investment in advertising) by giving the trademark owner the exclusive right to use the trademark on the type of goods or services associated with the mark. According to the USPTO, federal trademark registration also gives owners the ability to bring an action concerning the mark in federal court.
The Process and Time Investment in Trademark Enforcement
You must be proactive when it comes to monitoring for potential infringement and enforcing your rights as a trademark owner. Developing strategies to handle a trademark infringement claim can be time-consuming but is crucial for the protection of a registered mark. In a section on the USPTO website, a statement reads, “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.”
Enforcement Planning Options and Basic Trademark Protections
Monitor for potential infringement on your own: You have a number of options when it comes to monitoring for potential infringement on your own. This includes participating in trademark protection programs and keeping an eye on various marketplaces and social media platforms where your mark is in commerce. One way you can do this is by using search engine sites like Google. As we mentioned in a previous blog post, to find potential infringers using Google, simply search for your trademark. If it’s a word, name, or slogan, you can simply type it into the Google search bar. If it’s an image or icon, you can upload your image file into Google’s image search function (look for the camera icon). You can also monitor for potential infringement by paying attention to industry publications or email digests, the websites of your competitors, and by actively searching for use of your trademark on social media sites like Facebook and Twitter.
Monitor for potential infringement with the help of an attorney: Another way to monitor for potential infringement is by hiring a trademark attorney. An experienced trademark attorney can offer invaluable legal advice, especially when dealing with complex cases involving famous marks or issues of bad faith. While you focus on what you do best—running and growing your business—a trademark attorney can help monitor for and detect potential cases of infringement on your behalf, and can also help you decide how to proceed if infringement is detected.
Legal Actions and Damages if You Find Infringement
- Contact an attorney: It’s important that you take action when you detect infringement on your mark. If a lawsuit becomes necessary, your attorney can help you seek monetary damages for any harm caused by the infringement. If you decide not to hire an attorney to help you monitor and detect cases of potential infringement, you should consider hiring one if you think you have found any evidence of a person or business infringing on your trademark.
- Decide How You Would Like To Proceed: A trademark attorney can help you evaluate infringement issues, make recommendations on how to proceed, and help you develop an action plan.
- Take Action: The last step in your initial trademark protection and enforcement plan is to take action. This may include pursuing federal trademark protection for a registered trademark holder, which can provide additional legal avenues for addressing infringement. During this phase, your attorney can help you draft and send a cease-and-desist letter to the infringer.
The cease-and-desist letter
This letter serves two purposes:
It lets the party in question know that they are infringing on your trademark It outlines your request for them to stop infringing on your mark, and mentions what your next steps will be if the infringement continues
If you send a cease-and-desist letter and the infringement continues with no change, your attorney may recommend that you move into the litigation phase. If this does happen, it will be important to document all evidence of the infringement, your requests for the infringement to cease and desist, and any other information that pertains to your ownership of the trademark.
Getting Help from a Trademark Attorney
The idea of spending hours upon hours monitoring for potential trademark infringement is daunting for many business owners and trademark owners. Working with an experienced trademark attorney can alleviate this burden, ensuring that your basic trademark protections are actively enforced. If you fall into this group, hiring a trademark attorney to help with monitoring, detection, and enforcement may be a good option for you.
With the explosion of Internet-based business and international trade, protecting your brand is more important (and more difficult) than ever before. It’s important that you create a protection plan that fits your company, will grow with it as it expands, and can effectively protect your brand from predatory attacks and misguided adulation. But there’s no one-size-fits-all solution. You need to sit down with an expert to make sure you check all the boxes in order to create a plan for your business.
At The Law Office of Xavier Morales, we offer a comprehensive suite of trademark related legal services. If you need help navigating the complexities of trademark law or require legal advice on how to protect and enforce your trademark rights, please don’t hesitate to get in touch today.
