Hayes Soloway, P.C.

Policing and Enforcing Trademarks

Trademark owners should police their trademarks in order to avoid loss of trademark strength. For example, a company's sales force should bring potential infringements to the attention of the appropriate company official in addition to the observation of competitors' web sites, trade show exhibits, etc. which should be made periodically. Trademark counsel should be consulted before any discussion of a conflict is instituted against an “infringer.” In addition, federal trademark applications are published for opposition purposes and owners of prior trademark rights (via prior use, application or registration) may oppose registration or request extensions to oppose within 30 days of the publication. (Most foreign countries also publish applications for this purpose). Accordingly, maintaining a standing watch for published applications may provide an opportunity for preventing registration of a conflicting mark.

The owner of a Federal Trademark Registration may bring a civil action in federal court for trademark infringement. In addition, the Trademark Act provides federal court jurisdiction for claims for unfair competition even when the plaintiff does not own a Federal registration but claims prior use of a trademark. The test for trademark infringement is whether the accused infringing mark is “likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114(1)(a). In such an action the plaintiff must show that a “false designation of origin, false or misleading description of fact, or false or misleading representation of fact” has been made. Remedies for a prevailing plaintiff include injunctive relief and in some cases damages or defendant's profits and in exceptional cases, attorney's fees.

Another great tool for enforcing trademarks is the United States Customs and Border Protection.  Recording a registered US trademark with the US Customs office places the registered trademark on their watch list.  Whenever goods proceed through Customs, those goods will be checked to verify they are not infringing any of the trademarks on their list.  Goods that may be offending will be pulled aside for review and, if trademark infringement is found, the seized goods will be destroyed.  This recording of trademark registrations is easily one of the most cost-effective means for any trademark owner to protect against infringement. In 2012, US Customs made nearly 23,000 intellectual property-related seizures with an estimated value of $1,262,000,000.00.  If you have an infringement concern, enforcement does not need to bankrupt you.

Inquire with one of our attorneys about how we can help you.

Go to Top