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Do You Value Your Trademark? Then Police It!

Posted by Wayne Harper | Aug 03, 2017 | 0 Comments

So you been using your trademark for years. It's become a recognized brand regionally, if not nationally. Registered the trademark with the USPTO, and possibly with one or more states. You're all set, right? Wrong! Trademarks don't enforce themselves, they don't protect themselves, and the federal government and state governments (and Google) aren't looking out for you. Only you can defend your trademark.

There's really nothing stopping a competitor your industry, a similar industry, or possibly a completely different industry, from using your trademark.

You simply can't let this go on. If another party is conspicuously using your trademark for a number of years, legally speaking, you have abandon your trademark and you may not be able to enforce it court. Even if you don't lose your trademark, however, use of your trademark by another party weakens your brand, makes it less valuable, and could lower the value of your company if you should attempt to sell it at a future point time.

Unfortunately, infringement could go on for months or for years before you realize it's happening. You need to actively police your trademark. The term "police" is legalese in trademark law for the act of actively monitoring for use of your trademark by third parties. It is, in some respects, nearly close to a legal duty for trademark owners to maintain the validity and integrity of their trademarks.

So what can you do? Perhaps one of the simplest, and completely free, options you can use this to set up Google Alerts for your trademark, and possibly for alternative spellings of your trademark, and possibly as well words or phrases that are similar to your trademark. Google will then send you daily alerts as to when the terms you have placed in your alerts have been newly discovered by the Google search engine. A more expensive option is to subscribe to a trademark monitoring service. Such services not only monitor Google, they additionally monitor things like domain registrations, new trademark applications, new business incorporations, business directories, PPC keywords, and/or Amazon listings.

Regardless of where you get your data, if in your judgment the term is being used in a way that infringes your trademark you need to take action.

Where an infringing web page turns up on Google, the first thing you should do is to file a request with Google to remove that webpage from search results. When an Amazon listing infringes your trademark, you should file a request with Amazon to remove the listing. Where infringement turns up on other commercial sites, directories, or search results, there is often a procedure with such sites to remove infringing listings. Use these procedures faithfully, they nearly always work.

The second thing you should do is to send a Cease and Desist letter to the infringer, if you can identify them, demanding they cease to use your trademark. Cease and Desist letters may carry more weight if they come from a lawyer, but there is nothing wrong with sending one yourself if you don't want to pay a lawyer.

Unfortunately, a lot of infringers won't stop using your trademark. This can leave you with a hard choice. Of course the most effective way to stop infringers from using your trademark is to sue them in federal court. This can get expensive. Ultimately, litigation is both a crapshoot and a poker game. In some cases, if you simply file a complaint in federal court and serve it on the infringer, the infringer will cave in and back down. You can do this fairly economically, well, at least with the right lawyer. If the infringer is an individual or a very small business is a fairly good chance they won't defend themselves in a lawsuit. This would enable you to get a settlement or default judgment that will protect your trademark.

On the other hand if the person you sue is willing to spend some money, they can litigate the lawsuit and cost you a lot of money. If they have deeper pockets than you, they may well outlast you in a lawsuit. Going all the way to a trial could easily cost you $50,000 or more. At some point in time, it becomes a cost-benefit analysis, and you may actually even choose to walk away from your trademark.

If you would like more information about policing your trademark, or someone is infringing your trademark and you'd like some help evaluating your options, please feel free to give me a call.


About the Author

Wayne Harper

Harper IP Law, PA is the solo law practice of Wayne V. Harper. Before entering the practice of law, I worked for 18 years as an information technology professional with a wide array of corporations in retail and financial services industry, serving as a programmer, systems analyst, systems architect and director of software development, among other things. Since 2004 I've been advising businesses ranging from newly-formed companies to large publicly-held companies on a variety of intellectual property matters. I enjoy practicing intellectual property law and helping clients — both large and small — succeed. Here's how I typically serve clients. I offer patent services, trademark services, copyright services, software intellectual property services, and litigation services. Please take a look at any of my service offerings that may be of interest to you, or … Call Us Now!


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