A Primer on Policing Your Trademark
Written by: Ben Wagner
Five steps to protect a marks’ value
Trademark owners have a duty to police their mark. This applies to all types of marks – brand names, slogans, color, product shapes, or even a smell. The cost of dropping the ball on this duty can range from a bar on future enforcement of your rights against a particular company to a complete loss of all trademark rights. As a practical business reality, the value of marks that are not policed and their associated goodwill are always in danger.
This duty includes policing (1) for unauthorized uses of a mark, (2) for uses of confusingly similar marks, and (3) uses by approved trademark licensees. This blog post covers the first two types.
So how do you police? Here are five good steps:
First, decide where you are going to police. This will depend on where you currently own rights and what your expansion plans may be. Trademarks are territorial – federally registered marks are effective nationwide, while unregistered, common law rights are effective in the geographic area of actual use (and also the natural zone of expansion). Trademark rights also exist on a country-by-country basis, so rights in the US have no effect outside the US and vice versa.
Second, develop a proactive system to learn of misuses. Trademark problems are often easier to resolve the earlier they are raised, so diligence is key. Some suggested action plans include: (1) searching the web periodically for improper uses, (2) searching the USPTO’s online TESS database of federal trademark applications and registrations, (3) setting up a Google Alert for your trademark, (4) setting up an online trademark theft reporting process, a very prominent example being CrossFit’s (iptheft.crossfit.com), (5) following up on customer complaints, and (6) using a professional watching service.
Third, evaluate the substance of any potentially problematic uses you discover to decide if any action is necessary. For example, is the third party use on or for goods and/or services similar to yours? Is the area of geographic use an issue? Is the use of no legal concern because it is a permitted fair use?
Fourth, if the use is a concern and may infringe your rights in your mark, action should be taken. A typical first step is sending a cease and desist letter to the infringer. If a federal application is pending, you may be able to oppose the application at the USPTO. For uses on the web, the domain name registrar may be willing to remove improper or infringing content even if the owner or user refuses to. Improper use of a mark in a domain name can often be resolved through streamlined UDRP proceedings. Be cautious, however, about sending letters concerning the unauthorized or infringing use to third parties, such as the infringing company’s buyers, or using internet forums or other public venues to blast the alleged infringer, since you could end up on the receiving end of an interference lawsuit.
Fifth, if problematic uses remain unresolved despite efforts to address them, formal legal action may be necessary. Often simply filing of a lawsuit will force a resolution, and the fact is that most cases do not proceed all the way to trial. Business judgments have to be made on which cases to pursue. Some courts will excuse delaying litigation against a known infringer until the use poses a significant danger to the mark (the concept of “progressive encroachment” is discussed by Bloomberg BNA® here), while others will bar delayed enforcement if you wait too long to file suit.
Policing your trademark is not an option nor is it a luxury. It is an affirmative, legal duty. Such efforts will help to build a stronger, reputable brand, will avoid loss of trademark rights, and will minimize the risk of an infringer operating with impunity based on delayed enforcement efforts.
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