Enriching Life Through Innovative Ideas SM

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.

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.

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.

FindLaw Network

What Our Clients Say

Starting a new business can be a bit scary. Aside from worries of failure, there’s also the hassle of making sure all legal paperwork are properly filed. I reached out to Mr. Wang (Tommy) because of his excellent reviews and reputation and I am so glad I did. He was thorough and meticulous in answering all of my concerns and took time to find out special laws and policies regarding the kind of business I am starting. I could focus on the daily practical side of starting my new office without worry because I felt Tommy was reliable and took my case seriously. My business is opened and it’s all been a smooth start because of Tommy’s help. I have plans to start another business venture in the next few years and I already know I’ll be coming back to Wang IP Law.

The Shindig W.

I came to Tommy for help reviewing a licensing agreement I had secured with a well-known manufacturer. Tommy made sure I understood all the details in the contract and he negotiated with the company to improve my side of the deal. I mentioned to Tommy at my first consultation that we were looking to expand throughout the US and were investing a lot of money to make a big entrance into the market. I did not think I would have my store open so soon but Tommy also has connections with the local area and realtors to help me secure the location for my first store in the Los Angeles area. Tommy works a lot with the local businesses and he understands how to transition from the Asian market to US market. Within 8 months my store was open for business and fully operating. I must recommend Tommy to any business owners looking for help with contracts and improving their side of the deal. Tommy has the knowledge and experience to make sure there is a smooth process to open for business here, and make sure that your company is set up for success.

LI H.

I think Tommy and his team by far considered the best people to work with in my 16 business years. Beside quick responses to all my inquiries, they also done things right and providing very professional solutions. I’m highly recommending Tommy and his firm to all business owners.

Calvin C.

I have been working on my Utility Patent for almost 4 years. I have hired and fired two very reputable IP firms because with all their expertise and reputation for being some of the top firms in IP Law, I felt a lack of connection and care in my product, time and financial investment. Then I found Tommy and his team. Tommy does not waste time. He and his team are professional and extremely thorough. After 4 years, I finally found a legal team that I felt spent the time to really understand the components of my utility patent. Tommy also very mindful of cost and how and where my money would be better spent. I really feel I am in great hands with Tommy and his team. They have been patient with my revisions. And most importantly, they made me feel that they fully understood the importance this patent is to me. It has been a great and comforting pleasure working with Tommy.

G.L.

Read All