Once trademark or other intellectual property rights have been obtained and protected under any brand protection plan, it is important to maintain complete ownership of those rights by monitoring the marketplace and tracking unauthorized use of your company’s intellectual property. Monitoring and enforcing intellectual property rights, and trademark rights in particular, is important to maintain exclusive ownership over your registered trademarks. When a trademark owner allows others to begin to use its registered trademarks, the registered mark is weakened and begins to lose its identifying qualities.
A trademark is primarily an indicator of the origin of a product or service, and that product or service’s uniformity and/or quality. Once a trademark begins to lose its ability to identify the source of a good or service within the marketplace, the trademark can become generic and the owner can lose ownership rights. A failure to take action against third-parties that infringe or misuse your registered trademarks can lead to abandonment of the mark through a loss of trademark significance. An example is when a mark becomes a generic term, such as Escalator, Pilates, Yo-yo and Zipper.
Step 1: Monitor the Marketplace
The first step to maintain and protect a trademark is to monitor the marketplace for (1) any unauthorized use, and (2) newly filed trademark applications that may be confusingly similar to your registered marks or are directly infringing on your registered marks.
Monitoring can be conducted through a number of methods and databases. Most monitoring is conducted through searches of the U.S. Patent and Trademark Office (USPTO) database, USPTO Official Gazette and the world wide web. The searches can be conducted with the assistance of attorneys or through a number of other paid service providers. These monitoring searches are most effective when conducted at regular intervals. The frequency and depth of monitoring searches will depend on your overall brand protection plan, financial resources and level of aggressiveness.
Step 2: Track Unauthorized Use
In conjunction with regular monitoring for infringement or misuse of your registered trademarks, it is important to keep records of the monitoring and track any and all unauthorized use. This can be done by keeping a simple database of all unauthorized use. The primary details that should be tracked are:
The date of discovery of the infringement;
Date the infringement occurred or the date span;
The products or services advertised and/or sold;
Any actions taken to cease the infringing activity;
Identity of the infringing party;
Known associates of the infringing party; and
Method used to identify the infringing party and infringing activity.
Not only is it important to track and identify infringing parties in preparation for enforcement activities, but tracking is also a useful tool in identifying which monitoring method is the most effective at policing your registered marks.
Step 3: Respond to Unauthorized Use and Enforce IP Rights
As indicated above, a key aspect of maintaining one’s trademark rights involves monitoring for unauthorized use of the marks. However, monitoring unauthorized use alone is not enough to maintain ownership of a mark. As a trademark owner, you must be vigilant in both monitoring and enforcing your rights against unauthorized use by third parties.
Enforcement actions may include engaging in a persuasive, educational correspondence with infringers or sending “cease and desist” letters as a primary measure, when appropriate. Often, education is an effective tool to stop infringement, as individuals and smaller businesses may not be aware of the nuances of trademark law and are unaware that their actions constitute infringement. Respectful, educational communications can result in an amicable resolution for both parties. If this is unsuccessful, a stronger “cease and desist” letter may be necessary. If this does not result in the cessation of infringement by the infringer, then formal litigation or other proceedings to stop infringement may be necessary. Other solutions available may involve administrative remedies, such as opposition or cancellation proceedings before the Trademark Trial and Appeal Board for infringers attempting to register marks similar to yours.
While undertaking trademark enforcement actions is a serious affair, it should not be ignored. One of the primary dangers of failing to enforce trademark rights is the possibility of the mark becoming generic (also known as “genericide”). Generic terms are those that do not distinguish a single source of goods or services. Genericide can occur when a trademark owner fails to enforce its unrestricted use by third parties and to prevent its mark from becoming a generic name for its goods or services. When a mark becomes generic, its federal trademark registration can be cancelled at any time. 15 U.S.C. §1064(3) (2013).