YOU SHOULD POLICE YOUR TRADEMARKS!

You should police your trademarks! As I noted in http://www.chicagotrademarkattorney.net/acquiring-and-maintaining-a-trademark/ prior to selecting a trademark for either goods or services or, and you need to consider this, purchasing a domain name for those goods or services as that domain name is likely to incorporate your trademark, you should conduct a trademark search to make sure that that mark is available for your use not only as a domain name but also to identify your goods or services. That search should not only include the specific goods or services that you intend to use your mark on or in connection with but any related goods or services or potential goods or services that you may wish to use that mark on in the future. For example, you would want to know if a name is available for use on comic books, movies and television shows based on those comic books as well as on action figures based on the characters found in those books, movies and television shows.

Assuming that your search discloses that that name is available, you should register it with the U.S. Patent and Trademark Office. The advantages of federal registration are that it is prima facie evidence of the validity of that registered mark, the registrant’s ownership of that mark, and of its exclusive right to use that mark throughout the U.S. as well as gives the registrant the right to sue for infringement in federal court. Also, anyone seeking to register a similar mark in the U.S. will find your trademark application or registration in the records of the U.S. Patent and Trademark Office, which should encourage them not to adopt and use a similar mark for similar goods or services.

As to that latter point, sometimes a party may go ahead and seek to register a similar trademark or service mark for related goods to your own even if your mark appears in the Patent Office’s records. Hopefully, that Office will decide that the earlier filing of your own similar trademark bars the registration of that later filed mark and the subsequent filer of the similar mark gives up on its similar mark and decides to register a different mark that is unlikely to be confused with your mark. But sometimes the U.S. Patent and Trademark Office Trademark Examiner may conclude that that subsequent filer’s mark is not confusingly similar to your mark and allow it to proceed to publication. How would you know about this? One way is to review the Patent Office Trademark Official Gazette published electronically by that Office every Tuesday. This document may be found at https://www.uspto.gov/learning-and-resources/official-gazette/trademark-official-gazette-tmog Note that I review that Gazette weekly for any client marks that are the subject of either pending applications or registrations before that Office and that I do not charge for that service. An alternative means of finding similar marks to your own that may have been published by the Office and may cause confusion among your customers is to hire a firm that watches the records of that Office for filed and published marks. Corsearch, Corporation Service Company and Thomson Compumark are well-known companies that provide this service.

An easy way to potentially determine if another business is using your mark even if they haven’t filed an application to register it is to search the term at issue using the Google search engine, click on “News” and click on “Create Alert” at the bottom of the page. Once this is done, Google will send you an email every day alerting you of any news items involving that term that its search engine generates.

Two final points to remember; (1) there is a significant advantage to filing a trademark application in the U.S. based on your intent-to-use your mark in the U.S. rather than waiting until you are already marketing your goods and services in the U.S. as, assuming that you commence the use of your trademark during the life of your intent-to-use application, your trademark rights will start from the date that you filed your trademark application in the U.S. Patent & Trademark Office rather than the date that you first started using that mark in connection with the marketing of your goods and services and, therefore, even though that new product is merely a glint in your eye, by filing an application to register its name with the Patent Office, you will as of that date obtain trademark rights in it and (2) you need to be consistent in policing your mark. Every time you find the same or confusingly similar mark either filed for used for your goods or services or related goods or services, you need to object to that use.

The reason for this is that the courts have held that in the case of a weak mark, competitors may come closer to a particular owner’s identical mark than would be the case with a strong mark without violating that owner’s rights. See SURE-FIT PRODUCTS CO. V. SALTZSON DRAPERY CO., 117 USPQ 295 (C.C.P.A. 1958). If there are many similar third-party marks out there, then your mark will be deemed weak and the courts will likely allow other similar marks to coexist with your own. However, if you’re the first one to use that mark and object each time another party seeks to or uses a similar mark, then your mark will stand alone both in the records of the Patent Office and in the marketplace, it will be considered a strong mark and the courts will assist you in blocking any infringers of it as long as you have not abandoned your use of it. Policing a mark does not mean that you must sue every potential infringer that pops up. If you have a good case of likely confusion against each potential infringer and you are the senior user of the mark at issue, I have found that a strongly worded demand letter will often make the infringer go away. You may have to be willing to compromise; e.g., give the infringer a reasonable period, usually a few months, to cease its use, allow it to continue that use but in a manner that makes confusion unlikely, e.g. limiting their sales to a different marketplace or to different consumers, or even granting them a license to continue to use your mark if they assign their ownership in the mark to you in exchange for them paying a royalty.

Pursuing such a campaign may not be cheap in the short-run but by continually asserting your trademark rights in your brand against the world, that brand will grow as a property and should someone seek to acquire it, assuming that you wish to sell it, the financial rewards can be quite remunerative.

About ERIC WACHSPRESS

The material on this website is for informational purposes only. It should not be considered legal advice and is not intended to create an attorney-client relationship. If you have questions regarding any material presented herein, we recommend that you consult an attorney. This web site and information presented herein were designed in accordance with Illinois law. Any content in conflict with the laws or ethical code of attorney conduct of any other jurisdiction is unintentional and void. I am a Chicago attorney practicing in the areas of trademark, copyright and information technology law as well as general corporate law. Formerly a trademark examining attorney with the United States Patent and Trademark Office, I have been in private practice since 1987 representing clients in a wide variety of industries, including the consumer products, financial services, information technology and entertainment industries. You can contact me at markscounsel@gmail.com, by phone at 773.934.5855 or by mail at 417 S. Jefferson St., #304, Chicago, IL 60607 USA
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