Protecting your trademarks from infringement is necessary to ensure that your trademarks, first, remain YOUR trademarks and, second, remain functioning as trademarks. It does not happen too often, but occasionally, a trademark left unpoliced will end up being canceled legally, which allows a competitor to begin using the trademark. A more common problem is genericide. This happens when the trademark becomes the common word for the product or service. As such, the trademark no longer functions as the identifier of a commercial source for a product or service. Rather, as noted, the word just stands for the product or service. ZIPPER is the oft-cited 20th Century example here, and GOOGLE is a modern example of a company fighting the good fight to ensure that they do not lose their trademark.

How to protect a trademark from infringement?

First and foremost, register your trademark. Mostly this is done with the federal U.S. Patent & Trademark Office. But trademarks can be — and are routinely — registered at the State level. This has been particularly true lately with the registration of cannabis-related trademarks.

In any event, registration protects your trademarks in several ways. The registration serves as a nationwide (or statewide) notice of ownership. Registration also grants more legal rights in the event of infringement litigation and allows a trademark owner to use the circle R (®) marking. After certain intervals of time, registration also leads to the incontestability of certain aspects of the trademark and can lead to additional legal protections if the trademark becomes famous. Registration can also serve as a “jump board” for getting your trademark registered in foreign countries, leading to international trademark protections.

Second, make sure you have both inside and outside protection strategies. Inside strategies involve training of employees and on how they can help protect your trademarks. Train them about consistent use of trademarks and how trademarks should be mentioned in text and on social media. Go ahead and use the circle R designation and ask your employees to enforce that use with non-employees with whom they interact.

An inside strategy also means hiring a person or a team of people to protect your trademarks. Nothing gets done unless someone is assigned the task of getting it done. Trademarks are valuable and are worth the employee time and money spent. With some companies, trademarks are the most valuable assets owned.

Outside strategies are basically monitoring, policing, and litigating. It is important to regularly monitor the marketplace for any infringing use. This also includes monitoring applications for registrations. If unauthorized use is located, then letters must be sent, legal action threatened, and the infringement must be stopped. Enforcement also includes any situations where the trademarks have been licensed. The licensees must be monitored and policed just as rigorously as outside third parties. As noted, outside strategies also require consistent and correct use of your trademark on packaging, advertising, websites, etc.

Contact the Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

Trademark Enforcement: From Monitoring to Litigation

Registering a trademark with the USPTO is the beginning of the protection process, not the end. A registered trademark that is not actively enforced is a weakening asset. Courts and the Trademark Trial and Appeal Board have repeatedly held that trademark owners who fail to police their marks — allowing infringement to persist without response — can lose important rights, including the incontestability protections that come with Section 15 filings under the Lanham Act, 15 U.S.C. § 1065. In extreme cases, a trademark owner’s passive tolerance of widespread third-party use can be cited as evidence that the mark has lost its distinctiveness.

Building a Trademark Watch Program

A systematic trademark watch program is the foundation of effective enforcement. Watch services monitor USPTO filings, foreign trademark offices, domain name registrations, social media platforms, and marketplace listings — Amazon, eBay, Etsy — for marks that are identical or confusingly similar to your own. When a potential conflict surfaces, the watch service generates an alert. Your trademark counsel then evaluates whether the conflict is actionable and what response is appropriate.

Not every conflict requires aggressive action. The analysis involves the similarity of the marks, the similarity of the goods and services, the likely sophistication of the relevant consumer base, and the degree of harm. A small regional business using a similar mark in an unrelated industry may not be worth the legal fees of an opposition or litigation. A direct competitor using a nearly identical mark in the same channel of trade demands immediate action. Good trademark counsel helps you prioritize and allocate enforcement resources effectively.

Cease-and-Desist Letters

The first step in most enforcement actions is a cease-and-desist letter. A properly drafted C&D letter identifies the trademark owner, describes the infringing activity with specificity, asserts the legal basis for the trademark claim (registration number, date of first use, the federal statute under which the claim arises), and demands specific remedial action — typically cessation of the infringing use by a deadline, removal of infringing materials from websites and platforms, and destruction of infringing inventory. The letter also typically puts the infringer on notice that continued infringement will result in litigation.

The tone and legal precision of a cease-and-desist letter matters. An overly aggressive letter sent to the wrong party, or one that overstates your legal rights, can backfire — some recipients file declaratory judgment actions asking a court to rule that they are not infringing. An experienced trademark attorney can calibrate the appropriate level of assertiveness, ensure the factual claims in the letter are accurate, and draft the demands in a way that is enforceable if the matter proceeds to litigation.

Online Marketplace Enforcement

For e-commerce brands and consumer products companies, online marketplace infringement is one of the most persistent enforcement challenges. Amazon’s Brand Registry program, eBay’s VeRO program, and similar tools on other platforms allow trademark owners to report and remove infringing listings directly — without filing a lawsuit. Enrollment in these programs is one of the most cost-effective enforcement mechanisms available to trademark owners. But it requires maintaining active registrations and monitoring the platforms on an ongoing basis.

Amazon Brand Registry, in particular, requires that the brand owner hold a live trademark registration (a pending application may qualify in some circumstances). This is another reason why the registration step is so important. Brands that have been using their marks without registration have no access to Brand Registry’s automated protections and must rely on slower, more cumbersome complaint processes.

Trademark Infringement Litigation

When cease-and-desist efforts and platform enforcement fail, litigation may be necessary. Trademark infringement claims under the Lanham Act, 15 U.S.C. § 1114, allow a trademark owner to seek injunctive relief, actual damages, the infringer’s profits, and attorney’s fees in exceptional cases. For owners of registered trademarks, Section 1117 of the Lanham Act also allows for statutory damages in certain circumstances, which can be particularly useful when actual damages are difficult to quantify.

Federal courts have jurisdiction over Lanham Act claims, and trademark infringement cases can move relatively quickly compared to other commercial litigation — particularly when the trademark owner seeks a preliminary injunction, which asks the court to stop the infringing activity before the case is fully resolved. A showing of likelihood of success on the merits, irreparable harm, and balance of hardships in favor of the trademark owner can support injunctive relief at the earliest stage of litigation.

Revision Legal’s trademark attorneys handle enforcement matters at every stage — from initial monitoring and cease-and-desist letters through TTAB opposition and cancellation proceedings to federal court litigation. If you believe your trademark is being infringed, contact us for a consultation.