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.

Author: Jeff Williams

Jeff Williams is an experienced mechanical engineer and lawyer that consults closely with clients in a strait forward and clear manner.  He brings a particular set of strengths and unique perspectives to the firm.   

 

Jeff received a B.S. in Mechanical Engineering from Arizona State University in 2005.  He was an engineer for a number of years at a number of large corporations before pursuing his law degree.  He graduated from Texas A&M University School of Law (formerly Texas Wesleyan University School of Law) with a J.D. in 2010.  By combining his education and prior work experience into the field of intellectual property law, Jeff has developed key skills to fully assist clients. 

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