How Are Trademarks Enforced In The Marketplace?

Trademark owners with registered trademarks must actively monitor the marketplace and institute a program of trademark enforcement to prevent infringers and counterfeiters in the marketplace.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 aggressively police the federal, state and common law trademark databases and the entire internet by sending trademark cease and desist letters to any person or business using an identical or similar trademark, regardless of the specific marketplace in which the goods and/or services travel.  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 object 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, tag lines 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.

Should I Send A Trademark Cease & Desist Letter?

A trademark cease and desist letter is a legal demand letter sent to an individual or entity that is using a trademark or trade name in a manner that is likely to cause confusion or dilution with the rights of the trademark owner. The letter typically requests that the recipient stop using the infringing mark and/or take specific steps to remedy the situation, such as changing the infringing mark or discontinuing the infringing activity.

The purpose of a cease and desist letter is to give the recipient notice of the trademark owner’s rights and to request that they stop the infringing activity. This is usually a preliminary step taken before the trademark owner takes legal action, such as filing a lawsuit. A cease and desist letter can be an effective way to resolve trademark disputes without the need for expensive and time-consuming litigation.

The letter should set forth the specific allegations of trademark infringement, including the date of first use of the infringing mark, a description of the infringing goods or services, and the reasons why the recipient’s use of the mark is likely to cause confusion or dilution with the trademark owner’s rights. The letter should also include a deadline for the recipient to stop the infringing activity and a warning that the trademark owner will take further legal action if the recipient does not comply.

It is important to note that cease and desist letters should be written by an attorney who is experienced in trademark law. Our trademark attorneys help trademark owners draft cease and desist letters that are legally sound and effective in achieving the desired result of preventing infringing uses of a third parties mark. Additionally, our trademark attorneys help recipients of a cease and desist letters draft legally sound and effective responses or taking other actions in response to the allegations of infringement.

Should I Initiate a Trademark Opposition Proceeding?

A trademark opposition proceeding is appropriate when you believe that a trademark application that has been filed with the USPTO may be confusingly similar to a trademark that you own and have registered with the USPTO. This may occur if you believe that the applicant’s use of the trademark would likely cause confusion among consumers, dilute the distinctiveness of your mark, or tarnish its reputation. A trademark opposition proceeding allows you to present evidence and arguments to the USPTO’s Trademark Trial and Appeal Board in order to try to stop the applicant from registering the mark.

It is also appropriate to initiate a trademark opposition proceeding before the TTAB of the USPTO against a trademark application if the trademark applied-for is either descriptive or generic and may cause damage to other third party interests in the marketplace.

Should I Initiate A Trademark Cancellation Proceeding?

A trademark cancellation proceeding before the TTAB of the USPTO is typically appropriate in the following circumstances:

  • If the trademark was obtained fraudulently or through material misrepresentation.
  • If the trademark is generic and cannot be protected as a trademark.
  • If the trademark has become descriptive and no longer functions as a trademark.
  • If the trademark owner has abandoned the mark and is not longer using it in the marketplace with certain goods or services.
  • If the trademark is being used in a manner that is likely to cause confusion with another mark.
  • If the trademark owner is not using the mark in commerce.

The most common reason a third party initiates a trademark cancellation proceeding with the TTAB of the USPTO is if they believe that the registered trademark is likely to cause confusion with their own mark. This is often referred to as a “likelihood of confusion” issue, and it is the primary ground for cancellation of a registered trademark in the United States. This can occur when the third party believes that the registered trademark is too similar to their own mark and that consumers are likely to associate the two marks, leading to confusion in the marketplace.

Should I File A Lawsuit In Federal Court For Trademark Infringement?

It is appropriate for a registered trademark owner to sue a possible trademark infringer in federal court under the following circumstances:

  • Infringement: If the defendant is using a mark that is confusingly similar to the registered trademark and is likely to cause consumer confusion.
  • Dilution: If the defendant’s use of a similar or identical mark is diminishing the distinctive quality of the registered trademark.
  • False Association: If the defendant’s use of a similar or identical mark creates the false impression that the defendant is affiliated with or endorsed by the registered trademark owner.
  • Counterfeiting: If the defendant is using a fraudulent or imitation trademark that is identical to the registered trademark.
  • If the trademark is being used in a manner that is likely to cause confusion with another mark.
  • If the trademark owner is not using the mark in commerce.

In order to successfully sue for trademark infringement in federal court, the registered trademark owner must show that they have a valid and legally protectable trademark and that the defendant’s use of a similar or identical mark is causing confusion in the marketplace. A registered trademark owner may choose to sue in federal court rather than in a USPTO proceeding if they believe that they are entitled to remedies such as monetary damages or injunctive relief that are not available in a USPTO proceeding.

Should I Hire A Trademark Attorney?

Yes, it is highly recommended. Our experienced trademark attorneys can provide valuable guidance and support throughout the trademark registration process, from conducting a comprehensive trademark search to determine the availability of the trademark, to preparing and filing the trademark application, to responding to any objections or challenges that may arise during the review process, and can represent you in any legal disputes or opposition proceedings.

Furthermore, our trademark attorneys can help you to navigate the complex and sometimes confusing legal requirements for trademark registration, and can help you to ensure that your application is complete and meets all of the necessary legal requirements. We can also help you to properly maintain your trademark registration, which is an ongoing process that requires ongoing monitoring and enforcement.

In short, engaging our trademark attorneys can help you to ensure that your trademark application is properly prepared, that it meets all of the legal requirements, and that you receive the full benefits of trademark protection. While it may cost more upfront to engage us, it can often save you time and money in the long run because we can help you avoid costly mistakes at every stage of the trademark registration process.

If you would like to contact us to discuss your trademark matter, give us a call or fill out our online contact form – it only takes a few seconds. Once you send your message, one of our attorneys will contact you within one business day.