Monitoring and protecting your trademark

Trademark owners are responsible for protecting their trademarks against unauthorized use. The U.S. Patent and Trademark Office (USPTO) registers trademarks, but it does not enforce them.

• If a competitor uses your trademark without your permission, you could lose business to the competitor.
• Your reputation could suffer if a competitor uses your trademark to sell inferior goods or services, has poor customer service, or is involved in questionable or illegal activities.
• You could lose your trademark protection if you do not police its use. Examples of formerly valid trademarks that have been declared generic because they became commonly used to describe a type of product include “aspirin,” “cellophane,” and “thermos.”

Monitoring your trademark

One way to monitor a trademark is to check the USPTO filings regularly to see if anyone has applied to register a trademark that is similar to yours.

Because this process can be both time-consuming and easy for small-business owners to neglect, many businesses subscribe to a service that monitors trademark filings for them.

Opposing a trademark registration application

If you learn that someone is trying to register a confusingly similar trademark, you can oppose the registration.

Anyone who believes the registration of a trademark may damage them can file an opposition to registration with the USPTO. The opposition must be filed within 30 days of the date the proposed registration is published in the Official Gazette, the USPTO's official journal.

If you file an opposition, it will be decided by the Trademark Trial and Appeal Board in a proceeding that is similar to a court case. You may want to hire a lawyer to file your opposition and represent you in the proceeding.

Stopping an infringer

Not everyone who uses a similar trademark will try to register it, and someone may continue using a similar mark even if their registration application is refused.

If you believe that someone is using a trademark that is identical or confusingly similar to yours, you may want to consult an attorney for advice on whether the use infringes on your trademark and how best to proceed.

Typically, the first step in stopping trademark infringement is to send a “cease and desist” letter.

This letter notifies infringers that you have a registered trademark, describes the trademark, and states how you believe the other party infringes your trademark. The letter then asks the infringer to stop using your trademark immediately and threatens legal action if they continue to use it.

If a cease and desist letter does not work, you will have to decide whether to file a lawsuit to enforce your trademark rights. This is a complex decision that should be made with the aid of an attorney. The decision may depend on such factors as the cost of a potential lawsuit, the damage you will suffer if someone else uses your trademark and the likelihood that you will win.