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Friday, August 22, 2014

Protect your trademarks, protect your business

By Aaron D. Riedel

Intellectual Property

You’ve picked a name for your business that’s distinct, registered it as a trademark with the United States Patent and Trademark Office (USPTO) for protection in the United States. As you continue to build your business and consumers more readily recognize your business name, the value of your trademark increases. 

However, registering a trademark with the USPTO, whether a graphic design, stylized logo, word mark or product appearance (also called trade dress), is not the final step in protecting the trademark and its value. 

Every owner of a registered trademark then has a duty to monitor and police the marketplace for infringing and unauthorized uses. Infringing uses occur where another party uses its own mark or logo that is confusingly similar to the registered mark and threatens to cause consumer confusion. Unauthorized uses of a trademark often occur when another company or individual duplicates the trademark exactly without the trademark owner’s permission.

Failing to police a trademark after registration can have serious business consequences. The trademark owner can be prevented from enforcing their trademark rights and in some cases, can lose all trademark rights by having the trademark registration cancelled.

In order to police a trademark after registration, a trademark owner should work with Intellectual Property counsel to develop a specially tailored trademark protection program. A trademark protection program should consider including the following basic measures:

Step 1: Effectively monitor the marketplace for infringing and unauthorized uses. 

A trademark protection program should include regular searches for potentially infringing marks and logos. 

A good place to start is the USPTO’s website for new trademark applications and completed registrations that may infringe on your trademark. Intellectual Property counsel can evaluate the infringement and help determine whether a new trademark is confusingly similar to your registered mark. If a new trademark application is confusingly similar, you as the trademark owner can oppose the new trademark’s application to keep the infringing mark from Federal protection. An infringing trademark that has already been registered can also be cancelled on the grounds of likelihood of confusion.

Another integral part of monitoring the marketplace should include routine searches of the web and trade publications for marks and logos that are infringing in the same area of goods or services for which the trademark is registered. This can often be the easiest way to discover infringing marks and logos that have not been registered with the USPTO. This search component is also 

Step 2: Notify the infringers.

Trademark owners should then evaluate and craft an appropriate response to infringers to put infringers on notice. Traditionally, a trademark owner works with Intellectual Property counsel to send a cease and desist letter that states the trademark owner’s claims and demands the infringer stop using the infringing mark. This is often a very effective and less costly measure to stop infringers. However, a phone call or other subtler measure may be more appropriate, depending on the situation. 

Step 3: Determine whether to take legal action.

If a cease and desist letter, phone call, or other measure fails to cut off the infringing or unauthorized use, trademark owners can consider resorting to formal legal action. Trademark owners should consult with Intellectual Property counsel to evaluate the merits, risks and costs of a lawsuit. Very often though, beginning a lawsuit by filing a complaint with the court can force a settlement and permanently stop the infringing or unauthorized uses.

Generally, in the more attentive and vigilant a trademark owner is in policing a trademark, the easier it is to stop infringing and unauthorized uses right away. Continually taking these steps as part of a trademark protection program, also establishes proof that the trademark owner is monitoring its brand and mitigates the risk of having the trademark cancelled. 

While trademark registration is a good step toward protecting the value of your business, a trademark owner still has a legal obligation to monitor and police the marketplace for infringing and unauthorized uses. Establishing a comprehensive trademark protection program will satisfy this duty, protect the rights gained by registering the trademark with the USPTO, and ensure the trademark’s value over time.


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