By Jason S. Nardiello
Is it enough to simply register a U.S. trademark and be done with it? Most who register trademarks do just that and do not give further thought to this valuable intellectual property right. This article highlights the additional steps trademark owners can—and usually should—take to protect and enforce their marks over time. There is an oft-used phrase when it comes to trademarks in the United States: “Use it or lose it.” I would add another phrase, “Enforce it, or let it go.”
Use of TM and ®
After the successful registration of a U.S. trademark with the USPTO, the ® symbol may be used after the mark to put the world on notice that the mark is in fact registered. The symbol provides constructive notice that the mark is registered and owned by the registrant.
Any time prior to registration, an owner of a U.S. trademark may use the ™ symbol after their mark to put the world on notice that the owner is claiming common law rights over the mark. Using the ™ symbol acts as a warning to others that they are claiming trademark rights within their jurisdiction.
A registered U.S. trademark only provides protection in the United States. There is no “international registration” that covers all countries at once.
To obtain trademark protection in foreign countries, a separate application must be filed in each country where protection is desired. There are some exceptions in certain regions of the world. For example, one application can be filed with the European Intellectual Property Office (EUIPO) to obtain trademark protection in all 28 European Union Member States.
A U.S. trademark registration can be recorded with the U.S. Customs & Border Protection. If recorded, the CBP will inspect incoming cargo at the border, and may seize product that appears suspicious. CBP uses authorized importer/exporter information contained in the recordation file to assist in their seizure decisions.
This is a valuable tool as it is much less expensive to stop infringing product at the border than to prevent the sale of product once it has entered the United States.
Once a trademark is in use, it is important to police the marketplace to make sure there are no infringing uses of trademarks. If a trademark owner permits infringing marks to exist in the marketplace, the mark will eventually lose its distinctiveness over time, become diluted, and fail to operate as a trademark. A trademark watch helps to prevent this problem.
Cease and Desist Letters
If a trademark owner finds infringement, a cease and desist letter is usually sent to the other side containing a number of demands. These demands can include a request that use of the mark cease, a request that use of any domain names with the mark cease and be turned over; a request that product bearing the mark be destroyed or turned over to the trademark owner, a request for an accounting of profits, and a request for a monetary payment.
Cease and desist letters must be used with a level of restraint. If the cease and desist letter is “strong” enough, it could provide standing for the recipient to file a declaratory judgment in federal court seeking a declaration of non-infringement. This will all result in unintended consequences which is why legal counsel should be sought before sending any type of cease and desist letter.
Trademark lawsuits should not be lodged without serious consideration, careful strategy, and clear-cut goals. Trademark infringement lawsuits can be extremely expensive, with usually the discovery phase taking up much of the cost of litigation. It is quite common, and some will say necessary, to obtain a trademark consumer survey to obtain evidence of a likelihood of confusion, or to obtain evidence of secondary meaning in the mark (a trademark meaning).
Furthermore, it is often difficult to obtain monetary damages because a plaintiff may be unable to prove damages or the defendant’s profits. Often, the remedy in a trademark lawsuit is an injunction, stopping the other side from using the offending mark. While attorneys’ fees are available as an award in a trademark infringement action, it is not necessarily easy to obtain them.
As can be seen, registering a trademark is only the start of protecting a brand. The law imposes requirements on the owner: the trademark must be consistently used in commerce and the owner has the duty to police the mark to ensure that the mark has not become diluted as a result of similar marks in the marketplace.
With the strategies mentioned above, a trademark owner can maximize its commercial competitive advantage that the trademark provides. With an attorney as guidance, the trademark owner can effectively protect and expand their brand in the marketplace.
Jason S. Nardiello is a partner with Bell Nunnally in Dallas. He can be reached at firstname.lastname@example.org, or via the firm’s website – http://www.bellnunnally.com.