Trademark owners should diligently protect their trademarks from infringement and other misuse (e.g., blurring, tarnishment, unfair competition, passing off, false advertising and cybersquatting) that may harm the owner’s goodwill and business reputation.
A trademark owner is not required to uncover all uses that might conflict, or immediately commence a lawsuit against every infringer. However, a complete failure to enforce will lead to a weakening of an owner’s marks, loss of distinctiveness over time and a potential forfeiture of certain available remedies. At minimum, owners should establish an appropriate level of proactive monitoring of USPTO registration applications, the Internet and other uses in commence.
Companies with famous trademarks and/or large budgets should consider engaging a professional watch service to conduct such search and monitoring activities. Alternatively, companies with more limited budgets should simply ask their employees, contractors, customers, licensees and counterparties to look out for and report any potential infringements that may come to their attention. Either way, when potential infringements are identified, trademark owners should investigate and evaluate relevant factors, such as the third party’s ownership, priority of use, type of use and likelihood of confusion.
If a response is warranted, owners should consider and pursue the most desired outcome, including monetary damages, injunctive relief, a trademark license agreement, coexistence agreement or settlement agreement. Federal lawsuits and cancellation or opposition proceedings with the USPTO’s Trademark Trial and Appeals Board can be costly in terms of time, money and resources, so legal enforcement priorities should be established from the onset based on similarity of the marks, similarity of the goods, quantities of infringing products, dollar values and other appropriate considerations.
Low-level infringers may not be cost-effective to pursue. Nonetheless, trademark owners should continue to periodically monitor such infringers. They should also remain ready to vigorously enforce their rights if the infringement expands, causing increased or more imminent potential harm to the owner. That way, the owner can prevent the weakening of its mark and loss of remedies for the infringement.
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