In a perfect world, you would be able to use your federally registered trademarks without the fear of someone undercutting your brand. Unfortunately, that is rarely the case. With ownership of a registered trademark comes great responsibility. You may occasionally have to take action in order to enforce your trademark rights, which may involve one of the following pieces of advice.
1. Pick a fanciful, arbitrary, or suggestive mark.
Some trademarks are stronger than others. In the spectrum of distinctiveness, trademarks may be designated as fanciful/coined, arbitrary, suggestive, descriptive, or generic. Fanciful marks are the strongest, while descriptive and generic are generally not available for registration through the USPTO. We previously published a blog with much more detail on the spectrum of distinctiveness.
2. Register your trademark with the USPTO.
The first user of a trademark gets limited common law rights as the owner. In other words, your trademark could be protected within your company’s immediate geographic area. However, you will receive much stronger protections from federal registration. If your trademark application is approved by the USPTO, you put everyone else on “constructive” notice that you have priority rights over the mark. This can be extremely useful if you ever have to take someone to court over infringement; as long as you can show documentation that your mark is federally registered, proving that you have priority rights is quite simple.
3. Use your mark continuously.
After you register your trademark, you have to renew it at certain intervals with the USPTO. In these renewal filings, you must show that you have continued to use your trademark in commerce. Letting it sit idle is not a good idea.
4. Monitor the marketplace and pending applications.
After you register your trademark, it is the USPTO’s responsibility to make sure nobody is infringing on it. You must periodically check the internet and other places to make sure no confusingly similar marks are being used. Additionally, it is a good idea to monitor pending marks that have been applied for with the USPTO. If you believe one of those would create confusion in the minds of consumers, you may file an objection.
5. If you see a mark that might create confusion, send a cease-and-desist letter.
Not every instance of trademark infringement has to end with contentious litigation. There’s a good chance that anyone using a mark that infringes on yours doesn’t know about yours. Sending a C&D letter that matter-of-factly states your position (that you believe infringement is occurring) and lays out next steps (lawsuit) if the recipient does not stop the alleged infringement is often enough to resolve the situation.
If All Else Fails, You May Need to Go to Court
You shouldn’t feel bad about taking an alleged infringer to court. Your trademarks are some of your company’s most important assets. Without protecting your intellectual property, you are limiting the future success of your business.
Trembly Law Firm understands the importance of protecting trademarks. We also understand how little time small business owners have; our team can help take these matters off your plate so you can concentrate on running your enterprise and turning a profit. We look forward to speaking with you at your consultation.