Trademark enforcement is generally approached by trademark owners in three different ways. First, there are trademark owners that will obtain a federal trademark registration and never police the marketplace for trademark infringers, product counterfeiters, trademark hijackers, and other dubious individuals seeking to profit off of the brand recognition that the trademark owner has built over the course of many years, sometimes decades. This is considered the lackadaisical and laissez-faire approach to trademark enforcement.
Second, there are trademark owners that will obtain a federal trademark registration and regularly police not only the specific marketplace in which the goods and/or services travel, but the entire internet looking for any person or business using an identical or similar trademark. This is considered the overly-aggressive and belligerent approach to trademark enforcement. This approach is also called trademark bullying. Trademark bullying is defined as conduct by a trademark owner who: (1) takes an unreasonably inflated view of the scope of exclusivity of its trademark; and (2) makes overly aggressive threats and demands out of proportion to the conduct objected.
Finally, there are trademark owners that take an informed and balanced approach to trademark enforcement. This is the middle ground where our trademark attorneys believe trademark owners should reside. The law imposes on trademark owners the duty to be pro-active and police the relevant marketplaces in which its products and/or services travel. It is not necessary for a trademark owner to object to all unauthorized uses that could potentially conflict with its trademark. As the Trademark Trial and Appeal Board (TTAB) stated in McDonald’s Corp v. McKinley (1989): It is entirely reasonable for the trademark owner to obect to use of certain trademark in use on some goods [or services] which it believes would conflict with the use of its trademarks…while not object to use of a similar trademark on other goods which it does not believe would conflict with its own use. In other words, it is not required under law that a trademark owner object to each and every use of its trademark to prevent weakening and validity in the marketplace. Rather, a more practical (and economical) approach to trademark enforcement is to engage in an enforcement program that targets potential infringers where likelihood of confusion is readily apparent and at a level that would impact the trademarks strength and validity.
Trademark Monitoring To Identify Possible Trademark Infringement
Trademark monitoring is the proactive service of searching all relevant trademark databases, and sometimes the internet and online retail platforms, for identical or confusingly similar trademarks – such as business names, product and services names, logos, taglines and other trademarks. Thousands of trademark applications are filed with the USPTO each week. Even more trademark applications are filed in the 50 state and US territory trademark databases. Our law firm has access to all relevant trademark databases in order to perform real-time trademark monitoring services. If an identical or confusingly similar trademark is identified, our attorneys can address the conflicting trademark quickly to prevent use in the marketplace and also its potential registration.
If our attorneys identify an identical or confusingly similar mark that has entered, or potentially will enter, the marketplace, there are several strategies we can pursue on your behalf. Our attorneys may file a notice of protest with the USPTO if the conflicting trademark application has not yet been published in the Trademark Official Gazette for opposition. If a conflicting trademark application is currently in the 30-day publication window, our attorneys may file a notice of opposition to register the trademark with the Trademark Trial and Appeal Board (TTAB). If a conflicting trademark has already passed its publication period, our attorneys can prepare to cancel the trademark with the TTAB once it officially registers.
Overly-Aggressive Trademark Enforcement
An overly-aggressive trademark enforcement program can be just as detrimental to a trademark owner as having no enforcement program at all. A trademark owner with an overly-aggressive trademark enforcement program will, either on their own or through their attorneys, send cease and desist letters to any competitor (and often times non-competitors) that use similar or identical trademarks. Some of these cease and desist letters that claim trademark infringement and threaten expensive litigation may certainly be legitimate and well-founded in trademark law. However, some of these letters, sometimes written by a trademark owner and not its attorneys, are not founded on any objectively valid version of trademark law. The tort of malicious prosecution, abuse of process, and unfair competition (including Rule 11 sanctions for attorneys) are a few of the claims that a person or company can assert if they were subject to overly-aggressive trademark enforcement. Whether you are a trademark owner planning to send a trademark cease and desist letter, or a recipient of a trademark cease and desist letter, it is very important to understand your trademark rights and possible resolutions to avoid expensive litigation or legal sanctions.