The Basics of Trademark Enforcement

If you own a trademark, chances are you don't want anyone else using it or any mark close to it. Your trademark is your brand, your reputation, and a beacon for your customers in a crowded marketplace. If you discover that another company or person is infringing on your trademark, you can and should take action to enforce your rights.

Actively using a trademark

You might own a trademark, but you can easily lose those rights. You have to actually use your mark if you want to prevent others from using it. Trademark laws protect marks that are used and not just sitting idle. The protection is evidence of this.

To use a trademark means you are trading with it in the marketplace—that is, it is being used to identify goods or services that you offer. Continual use is required to maintain your trademark. This is true even for trademarks that have been registered. Registration does not mean that you are exempt from actually using the mark. Five years after the initial registration, you will have to prove that the mark has been actively used. If three years pass and you haven't used your trademark, the courts will consider the mark abandoned.

If you don't use your trademark, you will have no legal recourse if you try to enforce your rights later on.

Monitoring your trademark

The United States Patent and Trademark Office (USPTO) will not monitor or enforce your trademark. You have to keep an eye out for competitive products or services using your mark or a similar one. This is your responsibility—the law will not police your trademark.

To monitor your trademark, regularly check USPTO filings to see if any applications have marks similar to yours. You also want to keep your eye on the marketplace for companies or people who offer competitive products or services. You can either take the do-it-yourself approach and set up internet alerts for your trademark, or you can hire experts who will do the monitoring for you.

Enforcing a trademark

Most trademark-infringement enforcement strategies start with sending a cease and desist letter addressed to the trademark infringer. A cease and desist letter identifies the nature of the infringement and demands that the infringement stop immediately. You can write the letter yourself, preferably using your business letterhead. You can also hire an attorney to write and send this letter on your behalf. If the demand letter does not produce any results, then you will need to file a lawsuit.

You will only file a trademark infringement lawsuit if your cease and desist letter does not work. Lawsuits are expensive and require an experienced trademark attorney. If you have registered your trademark, you have the benefit of filing a lawsuit in federal court. If your trademark is not registered, and the infringing mark is being used in the same state in which you use your trademark, you file in state court.

If your lawsuit is successful, the court will issue an injunction—an order telling the infringing party to stop using your trademark. In some instances, you could recover damages that resulted in lost business revenue. If the infringing party used your trademark intentionally, the court could force them to forfeit profits gained by using your trademark, pay your damages, and pay your court and legal fees.

Trademarks are vital to the success of your business. You need to use them, monitor them for possible infringement, and take immediate action to stop the infringer when you identify them. If you don't, no one else will.