Trademark Enforcement

Trademark Infringement Actions

Most infringement actions begin with a trademark lawyer sending a cease and desist letter, often sent multiple times, that serves to notify the infringer of the violation. Trademark Infringement lawsuits are expensive, and consequently, it is quite typical for individuals on the receiving end of a Cease and Desist letter will halt the infringement activity upon receiving this foreboding letter.

Of course, if the Cease and Desist letter does not stop the trademark infringement, one can file a lawsuit either with the Federal Court system (if the trademark is registered with the United States Patent and Trademark Office (USPTO)) or in the State of use if it is an unregistered trademark. Often, courts will issue an injunction to stop further infringement. If you are able to prove that the violator acted in bad faith by knowingly violating the trademark, you may be awarded damages.

Trademark Dilution 

Trademark Dilution is different than infringement in that dilution claims apply, even in those instances where there is no risk of consumer confusion. Consider for the moment a new toilet paper startup that calls itself, “Gucci”.  Certainly, a common consumer would not believe that the famous and affluent Gucci company is behind this product and yet somehow, the mere existence of the Gucci brand attached to something as mundane and soiled as toilet paper harms the brand reputation that Gucci has worked so hard to build.  This is the essence of Trademark Dilution.

Trademark Enforcement; Know Thy Enemy

Defenses to Trademark Enforcement Actions typically involve a common set of claims;

1. Claiming that the original trademark is inherently ineligible for trademark protection due to the fact that it is either generic or descriptive
2. Claiming that the secondary trademark is not sufficiently similar to the original trademark to cause consumer confusion
3. Claiming that the secondary trademark is not tethered to sufficiently similar goods/services to cause consumer confusion
4. A First Amendment Right to Use Defense

Trademark Rights: Use it Or Lose it

Remember, the USPTO is counting on your to enforce your trademark rights.  The Trademark examiner at the USPTO will do his best to halt the application of a sufficiently similar trademark (tethered to sufficiently goods/services) but that is as far as they will go. If the examining trademark attorney may not catch every problematic mark, and certainly not those trademarks which have not been submited to the USPTO for review. The buck stops with you and if you do not enforce your trademark rights, you run the very real risk of losing them.

Speak to a top trademark lawyer to discuss the particulars of your case.  Happy hunting.