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Tips for Business Owners: Develop a Trademark Enforcement Plan

by | Mar 28, 2019 | Intellectual Property, Intellectual Property Law Update

You have invested time, money, and resources into the development and registration of arguably one of your company’s most valuable assets – its trademarks. The next step is developing a trademark enforcement plan to actively protect the trademarks.

Although the idea may seem daunting, the core of a trademark enforcement plan boils down to three simple steps:

  1. monitor the markets in which your trademarks are used (e.g., restaurant services, clothing, toys, computers),
  2. consult an intellectual property attorney, and
  3. take action when necessary.

Monitor the Market

Unless someone monitors the market, there is no way of knowing whether infringement is occurring. If you are unaware, you cannot protect your trademarks.

The quickest method for monitoring the market is engaging in regular online searches, including the USPTO database, Google, and popular social media platforms for your industry. Simply input your protected trademarks (words, design, or the combination), and scroll through the results. There is even a way to upload your registered logo/design into Google for an image search.

Investing just a few minutes per month is such an important element in protecting your business. However, if this is not something you feel confident handling yourself, you also have the option to use a third-party monitoring service.

Third-party watch service providers, such as CompuMark or Corsearch, have access to far more online and offline databases than free or low-cost providers. Your intellectual property attorney may offer monitoring services as well for a flat fee.

Consult an Intellectual Property Attorney

You should enlist the guidance of an intellectual property attorney before any infringement has occurred. She can advise you on preventative measures and ensure you understand your rights related to the registered trademark.

As soon as you believe another party is infringing upon your protected mark, it is imperative to reach out to your IP attorney for advice on how to proceed. If you allow others to use your registered mark, it will lose its strength and enforceability. Inaction can also lead to the estoppel of your trademark protection, eliminating your rights completely to trademarks that were originally created by you and your company.

Your trademark attorney will help you evaluate any infringement issues, make recommendations on how you should proceed, and assist in carrying out your action plan.

Take Action

Swift action is key when protecting your trademarks, and your attorney will be your best line of defense. You and your attorney will most likely draft a cease-and-desist letter, which will:

  1. point to the infringement,
  2. establish that your trademarks are registered with the USPTO,
  3. request the infringing party to stop using the questionable materials, and
  4. outline the consequences if they do not.

If there is no change in the infringing parties actions, you may decide to enter into litigation.

Imitation is inevitable when you have a successful product or service on your hands. Developing a trademark enforcement plan will provide you with peace of mind and the confidence you need when you do encounter infringement. The question is not whether you should have a plan but how quickly you can put one in place.


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