• Be Proactive In Protecting Your Trademarks and Other Intellectual Property
  • April 16, 2008 | Authors: Richard P. Ormond; Matthew S. Solmon
  • Law Firm: Buchalter Nemer A Professional Corporation - Los Angeles Office
  • Like any other asset, intangible assets such as trademarks, require maintenance to ensure that they retain their value and serve their intended function. Most businesses invest substantial amounts of time, money and effort to create and adopt a trademark. Through the use of that trademark that business solidifies its rights in that mark and builds up good will associated with that mark. However, many companies drop the ball when it comes to protecting and enforcing their trademarks.

    If your business allows a third party to adopt and use the same or even similar trademarks, your trademark’s value as a single source identifier is diminished. In essence, your business will lose its rights to that trademark.

    Be proactive in protecting your trademarks and other intellectual property by following the strategy outlined here.

    1. Perform a full audit of registered and unregistered marks and compile a list of all of your trademarks, service marks, trade names, trade dress and domain names to get a full grasp of intellectual property rights you own that may need attention and protection.
    2. Rate the importance to your business of each IP asset identified by the audit. There are various criteria to use, such as sales volume or revenue of branded products, core vs. fringe brands or products, house mark vs. product mark, advertising expenditure, public exposure and competitors, to name a few.
    3. Identify your competitors and their competing brands. Also identify related and complementary goods and services, identify the companies that offer these goods and services, and identify the brands associated with them.
    4. The best defense to third party infringement is an educated employee. Your employees are your best eyes and ears in the marketplace and on the Internet and are usually eager to bring infringement to the company’s attention. It is important to educate all of your employees about the different types of intangible property, your company’s marks, what infringement is, and the designated person(s) within your company to whose attention employees should bring possible infringements.
    5. Conduct regular searches of the Internet using Internet search engines. A newer, on-line search tool at www.pubsub.com will continuously update the results and notify you of changes once a search is set up. Check to see whether competitors or cybersquatters are using your mark in domain names by running periodic “whois” searches for each of your marks in the more popular top level domains, like .com, .net and .org. It may be a good idea to obtain an updated full search report every few years to get a comprehensive look at the federal and state trademark registries, business name databases and numerous databases to see whether marks or uses have occurred that your routine searches have missed.
    6. Order a trademark watch service for your more valuable and high priority marks. These services monitor the trademark offices in the United States and throughout the world and can notify you when trademark applications are filed for identical or similar marks, or when a mark is published for opposition. Often, this notification provides you the opportunity to address problems before the infringing marks are even in use.
    7. If you find use of a mark, name or design that is similar to one of your marks that you think may be a problem, conduct further investigation to uncover more information about the mark, the company using it, the associated goods and/or services and the earliest use date.
    8. When a problem is identified, it is time to take immediate action. The first step to enforcing your rights is to send the potential infringer a cease and desist letter that demands the infringer stop using your mark. Such letters are often more effective coming from counsel rather than the trademark owner. They can also trigger a pre-emptive lawsuit in a foreign jurisdiction. In these types of circumstances there is the potential for gamesmanship, so each violation should be carefully evaluated and reviewed to determine how and when you take affirmative action to protect your interests.
    9. As a last resort, you may need to commence litigation by filing a lawsuit for trademark infringement in state or federal court or a trademark opposition or cancellation proceeding before the United States Trademark Trial and Appeal Board or foreign country equivalents. Litigation would be appropriate either (1) where the alleged offender of your trademark rights chooses not to cease and desist the infringing conduct or not to otherwise cooperate with your demands, or (2) where you have the desire to be made whole for damage that the offender has caused.