Protecting Your Trademarks From Infringers
Trademarks are an important way to protect your brand’s reputation. They also protect consumers because trademarks allow consumers to determine the source or origin of goods or services.
Filing for trademark protection is the first step in enforcing your brand rights. However, in order to maintain protection your brands, you must diligently monitor third party use of these marks and pursue infringers for their illegal use of your brand.
Here are some tips for monitoring and enforcing your trademarks.
Monitoring for Trademark Infringement
The internet makes it easy to conduct searches for potential infringement of your brands. You can set up Google alerts to automatically tell you if your brand names, or similar brands are appearing in the news, on blogs, or on other sites.
You should also make it a regular practice, either once a month or more often, to conduct manual searches of sites allowing individuals or companies to list products, including Amazon, Ebay, and Etsy. Do not forget international sales sites, such as Alibaba and AliExpress for products being sold in international markets.
You can also conduct searches of pending trademark applications using the US Trademark Office’s online search tool. If you discover a pending mark that you believe is similar to a brand that you own, you can oppose that mark’s registration.
If you determine that someone is infringing on your trademarks, you can choose whether to attempt to resolve the matter outside of court, by sending a cease and desist letter, or you can proceed directly to a trademark infringement lawsuit.
Cease and Desist Letters
Typically, if someone is infringing your marks, you will begin by sending a cease and desist letter to the infringing party. It can be a useful way of ending the infringement without the extra time and expense associated with going to court right off the bat.
A cease and desist letter has four components. First, it introduces you and your legal claim to the trademark, typically by including information regarding your trademark registration.
Second, it identifies the infringing item. For example, if Mary’s t-shirt company owns a trademarked logo that includes the silhouette of a pig surrounded by a circle, and Nancy begins selling shorts that use a logo that is very similar to Mary’s logo, Mary’s cease and desist letter will demonstrate the similarity between the two marks, with photographic evidence.
Third, the cease and desist letter will list the steps you expect the infringing party to take. These steps typically include:
- Immediately stopping all use of the infringing mark by removing items containing the mark from their online or brick-and-mortar stores, website, or other marketing materials
- Showing proof of compliance within a certain time period, typically 10 days
Depending on the extent of the infringement, you may also ask the other party to pay you a settlement so that you will not pursue further legal action. It is also possible that the two parties reach a licensing deal, where the other party will start paying your company in order to use your brands on their products.
Finally, your cease and desist letter will inform the other party that you can and will take further legal action by filing a trademark lawsuit if the other party does not comply with your demands.
Although cease and desist letters carry the specific and serious threat of a federal trademark infringement lawsuit, we often hear stories of amusing takes on the letter. For example, in 2017, Bud Light sent a town crier with a scroll to deliver an amusing cease and desist letter to a brewery selling beer utilizing one of A-B InBev’s brands (Bud Light’s parent company). The message got the point across in a humorous but effective way. This can be a useful approach if you are concerned about your company’s public perception but still want to maintain exclusive rights to your brands.
Filing a Trademark Infringement Lawsuit
If your cease and desist letter is unsuccessful in stopping the infringing activity, or if you decide to take a more aggressive approach from the outset, you can file a trademark infringement lawsuit in federal court.
Filing a lawsuit does not foreclose the possibility of settling outside of court – often parties will be in settlement discussions while they are filing motions and taking depositions to prepare for trial.
Because federal lawsuits can take a year or more to resolve, you may not have a quick decision regarding the alleged infringement. However, filing lawsuits against infringers is a way to show that you are serious about enforcing your marks. If you have a history of successfully defeating infringers in court, you will be able to demonstrate your successes in future cease and desist letters you may need to send.
Consequences of Failing to Enforce Your Trademarks
It is important to remember that trademark protection requires that you pursue all infringers that you discover using your brands. Failure to monitor and protect your trademarks carries some serious consequences, including:
- Loss of the ability to stop a particular infringer, if you knew or should have known that individual or company was infringing your marks
- Loss of trademark rights altogether if third parties start to use your mark in connection with goods or services similar to your mark.
Works like “aspirin” and “escalator” used to be trademarked, but because these names were used so often by third parties, they became genericized, essential creating a free-for-all allowing everyone to use these terms. This process can happen extremely quickly – for example, Apple created the “App Store” trademark and lost the exclusive right to use the name in less than two years.
Do not let this happen to your cherished intellectual property – take the time to properly monitor and enforce your brands.
This article is for informational purposes only and does not provide legal advice, nor does it create an attorney-client relationship. If you have questions about trademark filings, contact the experienced trademark attorneys at Revision Legal. We can be reached today by using the form on this page or by calling us at 855-473-8474.