If you snooze, you lose – especially so in the world of trademarks. Most businesses are aware of trademarks as a tool to protect their brand from imitators who seek to profit off of their success, but many fail to recognize the importance of enforcing those trademarks. When a business fails to take action in the face of trademark infringement, they risk not only the trademark but also control over their brand.
Use it or Lose it
Businesses are first required to actually use their trademark. After five years, the United States Patent and Trademark Office (USPTO) will check for evidence that your trademark has actively been used, and if not, after another three years, the mark will automatically be abandoned. This, however, usually isn’t the issue for any business that seeks to use trademarks for their brand. Even if your business actively uses its trademark, the USPTO does not enforce it for you; it’s up to the business to enforce their trademark by taking action against infringement when deemed necessary. The first step of enforcement usually comes with a cease and desist order, which will stop the infringement in most cases. If the order is not sufficient, then a suit may be filed against the infringing party.
Businesses should take action in every case of suspected trademark infringement, and if they choose not to, the trademark is at risk. One of two things may happen: other businesses will continue using the trademark without repercussion, in which case the trademark is largely pointless, or if the business decides to finally take action against a suspected infringement of their trademark it could lose that mark in the ensuing litigation.
The Laches Defense
The laches defense is not limited to trademark law but has seen use in trademark cases as a defense against infringement, and has sometimes resulted in a loss of the trademark. The laches defense asserts that the prosecuting party was stagnant in exercising its rights, and so if those rights were enforced now, it would impose undue prejudice to the defendant. In the case of trademarks, this defense is used in cases where the infringing party has used a similar trademark for an extended period of time, long enough to establish themselves as a brand and have achieved recognition. In a successful laches defense, the prosecuting party effectively loses their ability to enforce their trademark against the infringing party due to their lapse in enforcement, leaving them free to utilize the trademark.
Enforcing your business’s trademarks isn’t something to push off until tomorrow. For assistance in monitoring, enforcing, and protecting your trademarks, contact Trembly Law today at (305) 985-4571.
