How to Proactively Guard Your Brand Like a Pro!

Having a registered trademark is an essential for any business, but acquiring it is only half the battle. Like any other piece of property, your intellectual property is an asset that needs to be policed regularly over the course of your ownership.

When it comes to trademarks, this process of continually enforcing your rights is particularly important. While the nimble nature of the online economy has thankfully made it easier for entrepreneurs to emerge and achieve success, it also clears the path for potential trademark infringement, whether accidental or not.

As the owner of a registered trademark, it’s up to you to know how to approach policing your mark—that is, knowing what tools are at your disposal to enforce your existing rights. Here are four methods we facilitate for our clients most often.

Trademark Watches

Ecommerce in particular changes overnight these days, which is why it’s critical to carefully monitor the marketplace after you’ve secured a trademark registration. Ideally, you might engage a trademark watch service to alert you to potentially infringing marks. The great thing about this option is that it essentially does the heavy lifting for you: a third-party watch service will review all trademarks coming through the USPTO for potentially similar, confusing, and/or infringing marks. Watch services give you early warning and more time to contact the infringer. Additionally, infringers are more likely to stop using mark if you catch them early on—in other words, before they’ve invested substantial time and money in building the mark for themselves.

Cease and Desist Letters

A cease-and-desist letter is the option to reach for when an infringing mark is already being publicly used in commerce. The USPTO describes the receipt of a cease and desist letter as quite serious, and that options for responding to such a letter “may each have significant legal ramifications”—meaning, it’s usually in the recipient’s interest to respond or take action. A cease-and-desist letter informs other party of your prior rights as the trademark owner and asks them to stop using the infringing mark by a specified date as an alternative to litigation.

Trademark Oppositions & Cancellations

Engaging the USPTO’s Trademark Trial & Appeals Board (TTAB)—the administrative body that oversees USPTO—is a more formal method of policing your mark. This option involves filing a notice of opposition with the TTAB, to A.) notify them that a pending trademark is potentially infringing or may cause confusion in relation to your own mark, and B.) request that the TTAB prevent the process of approving and publishing the infringing mark. Likewise, a trademark cancellation would involve requesting that the TTAB cancel a mark that’s already registered.

We often call oppositions and cancellations “Litigation Lite”—they’re the most time-consuming options short of actually going to court. Both processes can include discovery, motion practice, and other common elements of litigation; the only difference between them and a lawsuit is that there is no trial. Note that while the TTAB does make rulings as to whether a party can keep their trademark registration, they don’t award financial or monetary damages. You would have to take your infringer to court for those.

Federal or State Litigation

Litigation is a last resort against trademark infringement—and frankly, sometimes it’s necessary. It’s both expensive and time consuming, but if the other party won’t settle or comply with a cease-and-desist letter, taking your infringer to court is the only other option in the pursuit of protecting your brand.

If you’re seeking assistance with brand protection, the Vivid team is well-positioned to help with any of the above courses of action. Drop us a line below to get in touch!