If you want to stop people who might utilize the marks associated with a brand you own, the first thing you need to do is register those marks with the USPTO. However, your work does not stop at registering your marks – the real deterrent comes when entities police trademarks. A lawsuit from last month illustrates this concept perfectly.
Over the past 20-plus years, Harry Potter has become one of the biggest brands in the world. People everywhere know the characters, the costumes and accessories, the different school Houses, and so on.
J.K. Rowling owns the copyright on the books, but in terms of trademarks, Warner Bros. owns everything that was created for the movies and around the ecosystem of those movies. All told, the entertainment giant holds trademark registrations for hundreds of Harry Potter-related marks, and along with their various licensed partners, they have created all kinds of products using those marks.
So, how is it possible that numerous counterfeiters were using these registered marks without permission?
Registration Says “You Can’t Use My Mark” – But It Is Policing That Actually Stops Bad Actors
As you might imagine, there is a lot of money to be made from the huge variety of products associated with the Harry Potter universe. So even though Warner Bros. owns the marks, counterfeiters did not hesitate to create knockoffs of all kinds of Potter products and sell them as if they were the real thing.
Why? Quite simply, because registration just says “you are not allowed to do this.” If you want to really stop someone, that means putting in the time and effort to police the trademarks you own.
Warner Bros. did this at the beginning of March by filing a lawsuit against a variety of online merchants. Warner Bros. claims the online merchants are infringing on Warner Bros. trademark rights by pretending their Potter-related products are authorized. Their suit includes three demands:
- Defendants stop selling the unauthorized merchandise
- Defendants pay Warner Bros. any profits made from selling said merchandise
- Online marketplaces must stop any advertisements promoting the infringing goods
If this seems like a big – and likely expensive – step to take, you are not wrong. But with a new Harry Potter TV series coming out next year, Warner Bros. probably ran the numbers and decided it was worth it to remove the “clutter” of all those unauthorized products before they start trying to sell a whole new generation of Potter-related goods in the near future.
Good for them, protecting their intellectual property – but what if you are not a multinational entertainment corporation with deep legal pockets? Are there less intense things you can do to police trademarks you own?
Yes, You Can Police Trademarks You Own without Breaking the Bank
The first thing I recommend doing is setting up various alerts so that you will be notified if your marks are being used without your permission. This method is far from perfect, but you can do this through Google for free. Also free? Regularly searching trademark databases to catch potentially infringing new filings.
Once you start getting into paid policing, third-party trademark monitoring services are useful for keeping an eye on how your mark is being used and – depending on the service – evaluating the best course of action to take when you come across potential infringement.
Speaking of which, one of the simplest, least expensive, and most effective ways to handle trademark infringement is to send the offending party a cease and desist letter. We recommend going through a legal professional to do this, as the cost is still relatively low, and it prevents you from sending something that may include legal inaccuracies.
Additionally, INTA (International Trademark Association) and the TTAB (Trademark Trial and Appeal Board) both have programs that recognize – and in some cases can connect you with – free legal assistance for small businesses to help with relatively simple trademark matters.
That being said, once things get past the cease-and-desist point, you will likely need to evaluate how much the unauthorized use is costing you – both in real dollars and brand goodwill – versus the price of paying for an experienced trademark litigation attorney to protect your mark.