Wang IP Law Group, P.C.
Local 626-269-6753
Toll Free 888-827-8880

FAILING TO ENFORCE YOUR TRADEMARK COULD BE COSTLY

Trademark owners should diligently protect their trademarks from infringement and other misuse (e.g., blurring, tarnishment, unfair competition, passing off, false advertising and cybersquatting) that may harm the owner's goodwill and business reputation.

A trademark owner is not required to uncover all uses that might conflict, or immediately commence a lawsuit against every infringer. However, a complete failure to enforce will lead to a weakening of an owner's marks, loss of distinctiveness over time and a potential forfeiture of certain available remedies. At minimum, owners should establish an appropriate level of proactive monitoring of USPTO registration applications, the Internet and other uses in commence.trademarklock.png

A trademark owner is not required to uncover all uses that might conflict, or immediately commence a lawsuit against every infringer. However, a complete failure to enforce will lead to a weakening of an owner's marks, loss of distinctiveness over time and a potential forfeiture of certain available remedies. At minimum, owners should establish an appropriate level of proactive monitoring of USPTO registration applications, the Internet and other uses in commence.

Companies with famous trademarks and/or large budgets should consider engaging a professional watch service to conduct such search and monitoring activities. Alternatively, companies with more limited budgets should simply ask their employees, contractors, customers, licensees and counterparties to look out for and report any potential infringements that may come to their attention. Either way, when potential infringements are identified, trademark owners should investigate and evaluate relevant factors, such as the third party's ownership, priority of use, type of use and likelihood of confusion.

If a response is warranted, owners should consider and pursue the most desired outcome, including monetary damages, injunctive relief, a trademark license agreement, coexistence agreement or settlement agreement. Federal lawsuits and cancellation or opposition proceedings with the USPTO's Trademark Trial and Appeals Board can be costly in terms of time, money and resources, so legal enforcement priorities should be established from the onset based on similarity of the marks, similarity of the goods, quantities of infringing products, dollar values and other appropriate considerations.

Low-level infringers may not be cost-effective to pursue. Nonetheless, trademark owners should continue to periodically monitor such infringers. They should also remain ready to vigorously enforce their rights if the infringement expands, causing increased or more imminent potential harm to the owner. That way, the owner can prevent the weakening of its mark and loss of remedies for the infringement.

No Comments

Leave a comment
Comment Information
Contact Us To Get Started

Contact Us To Get Started

Contact our office to schedule a free, initial consultation by dialing 888-827-8880 or by completing our brief, online questionnaire. Based in Los Angeles, our firm represents clients throughout California and in China, Hong Kong, Taiwan, Japan and Israel.

Bold labels are required.

Contact Information
disclaimer.

The use of the Internet or this form for communication with the firm or any individual member of the firm does not establish an attorney-client relationship. Confidential or time-sensitive information should not be sent through this form.

close

Privacy Policy

Our Locations

Industry
18645 East Gale Ave.
Suite 205
Industry, CA 91748

Phone: 626-269-6753
Map & Directions

Los Angeles
355 S. Grand Ave.
Suite 2450
Los Angeles, CA 90071

Toll Free: 888-827-8880
Phone: 626-269-6753
Map & Directions

Irvine
18662 MacArthur Blvd.
Suite 158
Irvine, CA 92612

Phone: 626-269-6753
Map & Directions

Taiwan - Taipei
37F Taipei 101 Tower, No.7, Sec. 5 Xinyi Road
Taipei, Taiwan 11049

Map & Directions

QR Code