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Trademark enforcement tips

Posted by ipelton on: March 8th, 2010

Part of keeping your trademark rights, and enhancing them, is enforcing your trademark.  This is both a legal requirement for a strong trademark and good branding advice.  If you allow your trademark to be diluted by others, or allow potential confusion between your brand and that of  a competitor, you are weakening the strength and value of your trademark.  After all, the purpose of an original and strong trademark is to create a unique and powerful brand identity.

Enforcement means dealing with any infringers or copycats.  Here are some quick tips for enforcing your trademark rights:

  • REGISTER. Register your trademark and properly use the registered symbol – ®.  Appearing in the USPTO database (at www.uspto.gov) of trademarks and showing others that you have protected your trademark generally goes a long way toward scaring off potential copycats and infringers.
  • MONITOR. Monitor for possible infringers.  Set a reminder to search the USPTO and a few major search engines every 3 months for your trademarks.  Then you will have the information needed to make decisions about your options.  Also, set up a free Google Alert (or similar service) to do automated searching for you about your trademarks.  http://www.google.com/alerts.
  • ACT QUICKLY.  Generally, the sooner you deal with an infringement, the better.  Waiting too long, once you have knowledge could mean that you ‘acquiesce’ or implicitly consent to the use by someone else.  And the more time and money the other party invests into their name and their business, the more likely they are to put up a stronger fight to keep the name, which even if you win means spending more time and money on it.
  • DON’T OVER DO IT.  Not every use is an infringement. Are they in your industry or a competing industry or is their business completely unrelated to yours?  Is there name exactly the same or slightly different?  If the situation is not deemed to be an infringement, perhaps it is is worthy of a warning letter just to let the other party know that you will be monitoring their use to ensure it does not become an infringement.
  • BE REASONABLE. Litigation can be expensive and time consuming. Generally, if you have not been financially damaged, putting a quick end to the infringement without a huge legal bill may be more important than trying to collect a few dollars.  Collecting a few dollars could cost a lot of dollars.  Approaching a resolution reasonable is more likely to promote a discussion and settlement rather than litigation.
  • CONSIDER THE BACKFIRE.  Make sure your facts are correct before doing anything – if you were not using the name first you probably have no infringement claim, even if you have a registration.  And remember that the recipient of your actions could go to the media or could post your letter online.  Bad publicity for you could outweigh the gain in continuing with the enforcement at that point, which is why an enforcement strategy is complex and brings me to my final tip,
  • CONSULT AN ATTORNEY. There are complex issues involved and their is a great value to your business in doing it right.  Approaching a possible infringement wrong could not only jeopardize your enforcement and the strength of your trademark, it could backfire and have worse consequences.  And sending a letter from your attorney shows the recipient right away that you are serious and willing to spend money and do what it takes to protect your trademark.

© 2010 Erik M. Pelton & Associates, PLLC. ALL RIGHTS RESERVED.

www.tm4smallbiz.com

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