5 Tips on Trademark Enforcement

Trademarks rank among your brand’s most valuable assets. As a result, it is essential that you do everything in your power to enforce your trademark rights.

Trademarks are intended to validate the source of the products or services that your company provides. Effectively, a trademark communicates to consumers the brand’s identity, helping them to select the right product from the store’s shelves. However, a trademark is even more than that. It signifies the reputation or goodwill that your brand has worked hard to build over the years.

This means that when someone abuses your trademark rights, it’s no small matter. Accordingly, it is essential that you remain vigilant when it comes to protecting your trademarks.

How Is a Trademark Enforced?

Imagine that you have discovered a competitor in your industry that is using a logo that is confusingly similar to yours. You’re worried and outraged, and you’re determined to take immediate action.

If you consult with a trademark attorney, you’ll soon discover that the accepted course of action is to send a cease and desist letter. The letter is addressed to the infringer who may be acting either knowingly or unknowingly. That is, the infringer may be aware of your trademark and purposely infringing on your rights or the infringer may be unaware of your trademark and is consequently unknowingly infringing.

Sending a cease and desist letter frequently is all that is required to convince an infringer that they need to switch marks. What’s really critical here is that the letter be sent on official attorney letterhead. Simply put, a cease and desist letter from an attorney carries a great deal more weight with the infringer than a letter from the trademark owner would. The fact that you have retained the services of a trademark attorney demonstrates your dedication to the integrity of your mark. The infringer will almost certainly take it seriously and take immediate action.

Beyond Cease and Desist Letters

Your attorney may send a cease and desist letter, but it doesn’t always get the reaction that you hope for. It may be that the recipient of the letter doesn’t believe that their mark infringes on your rights. They may hire legal counsel of their own to defend them.

This doesn’t necessarily mean that you’ll soon be engaged in a lawsuit, although that is a possibility. Typically, your attorney and the other party’s attorney will negotiate, looking for ways that the two trademarks can coexist. As they try to hammer out an agreement, which may include the infringer selecting a new trademark, the possibility of litigation remains in the background.

A lawsuit is a last resort, but it can be a useful tool in some situations. This is just one of the reasons why it is wise to work with an attorney whenever you need to enforce your trademarks.

The Danger of Ignoring Trademark Enforcement

One of the best tips for trademark enforcement is to not ignore it. No one but you is going to handle enforcement. A business that is using your mark or one that is confusingly similar definitely does not have an interest in policing your rights. As they sell inferior products, they erode your company’s reputation, causing you to lose sales and customers.

Trademark Monitoring Ensures Better Enforcement

Savvy trademark owners work closely with an intellectual property attorney who can monitor their mark or marks. Basically, this means that your attorney, or a service that he hires, actively monitors trademark applications around the world to determine whether or not anyone is using a mark that might infringe your trademark.

If you want to get serious about enforcing your trademark, then mere registration is not enough. It is essential that you ask an IP professional to monitor the trademark to catch infringers in the act and put a stop to them.

When Do You Need to Enforce Your Trademark?

A company that’s been operating for years and has a registered trademark that is routinely monitored probably knows that potential infringers are lurking everywhere. However, this doesn’t mean that it is necessary to pursue every potential infringer with all available resources. Doing so simply isn’t feasible from business or economic standpoints.

Once again, this is why it’s sensible to work closely with a trademark attorney to enforce your rights. Your attorney can help you to determine whether or not a certain infringing party is worth pursuing.

Several factors may play a part in this decision. For instance, you may decide to enforce a trademark when the infringer is offering the same or highly similar goods that you are. If their mark is confusingly similar to yours, it may be difficult for consumers to figure out if they are buying your products or inferior products from another company. Further, if the infringer is operating in the same countries that you are, the potential for confusion and lost sales multiples.

Work With a Texas Trademark Attorney

Whether you have a trademark that you would like to register or have enforcement concerns, contact the Law Office of Jeff Williams. We help clients pursue federal trademark registration in the U.S. and in jurisdictions around the world. Among our other services are trademark monitoring and enforcing trademark rights. With a full menu of intellectual property services available, our office is prepared to help protect some of your brand’s most valuable assets.

Trademark Enforcement: It’s Not Black and White

Imitation may be the sincerest form of flattery, but when that imitation involves the use of your proprietary intellectual property, then you are likely to feel far more angered than flattered.

That’s because a successful branding effort is incredibly valuable. When consumers see a recognizable brand name, they feel a connection. Hopefully, it’s a positive one that includes associations with reliability, functionality, comfort, stylishness or other affirmative attributes.

Building a brand is rarely an accident. Typically, a great deal of ingenuity and grit are involved. This is in addition to the considerable expenditure of money to properly promote and sell the brand.
Enter the Imitators

When a brand enjoys success, it is all-but inevitable that copycats will ensue. These copycats may sell a similar product under a very similar brand name. This also is no accident. The copycat is hoping to capitalize on the goodwill embodied by the trusted brand name. They reason that enough consumers will be confused that they will choose their product over the original.

Erosion of a Brand Name

Unsurprisingly, this can become a major headache for the owner of the original brand. With an imitator out there, it’s only a matter of time before consumers start mistaking the copycat for the original. Chances are good that the copycat’s wares are inferior to those offered by the originator. How long will it be before the negative impression engendered by the imitator begins to tarnish the sterling reputation of the real brand name?

Is Trademark Enforcement Necessary?

The efforts of many copycats go nowhere or their efforts are so insignificant that they are a mere nuisance. However, there are cases where imitators become well known and start to cause real, measurable damage. How does the owner of a brand determine whether or not it’s worthwhile to enforce their trademark rights against an infringer?

The first step is determining how strong the trademark is. A more arbitrary and unique trademark is a better one than a mark that is generic. For instance, essentially made-up words like Pepsi, Exxon and Kodak are all excellent examples of strong trademarks. They are arbitrary in that they don’t immediately suggest the products they sell. A trademark that is merely descriptive of the goods is going to be much harder to enforce. However, if your trademark is arbitrary and unique, it will be easier to enforce.

Registration May Help with Trademark Enforcement

Another good indicator of your ability to enforce your trademark is whether or not it is registered. A U.S. trademark registration makes your mark enforceable in all 50 states. A state registration protects your mark within that state. Common law rights are available to people who hold an unregistered trademark, but they can be limited in scope and make enforcement complicated.

If the competitor is going to be operating in the same geographic area in which the original owner has any trademark rights, then it may be easier to fight the imitator. Overlapping geographic locations will spark consumer confusion, raising questions of unfair competition as well. Alternatively, if each trademark owner is sticking to a specific and remote geographic location, then enforcement action may not be necessary. The owners may agree to avoid each other’s areas, and never the twain shall meet.

Being vigilant for your trademark rights may be critical to your company’s success. However, this does not mean that every potential case of trademark infringement is worth pursuing with all means at the company’s disposal. Doing so would be distracting and expensive. Instead, all enforcement actions should be considered on an individual basis and with the guidance of an intellectual property attorney. Some instances of potential infringement are absolutely worth pursuing with every available means. However, it may be business reasonable to choose to ignore some potential infringers while seeking amicable agreements with others. This mitigates costs and risks without diluting the goodwill associated with the trademark at issue.