Monitoring and Protecting Your Trademark

Monitoring and Protecting Your Trademark

by Jane Haskins, Esq., January 2015

Why It’s Important to Protect Your Trademark

Trademark owners are responsible for protecting their trademarks against unauthorized use. The U.S. Patent and Trademark Office (USPTO) registers trademarks, but it does not enforce them.

There are several reasons why you should take steps to protect your trademark:

  • If a competitor uses your trademark without your permission, you could lose business to the competitor.
  • Your reputation could suffer if a competitor uses your trademark to sell inferior goods or services, has poor customer service, or is involved in questionable or illegal activities.
  • You could lose your trademark protection if you do not police its use. Examples of formerly valid trademarks that have been declared generic because they became commonly used to describe a type of product include “aspirin,” “cellophane” and “thermos.”

Monitoring Your Trademark

One way to monitor a trademark is to check the USPTO filings regularly to see if anyone has filed an application to register a trademark that is similar to yours. Because this process can be both time-consuming and easy for small-business owners to neglect, many businesses subscribe to a service that monitors trademark filings for them.

What to Do If Someone Else Is Using Your Trademark

Opposing a Trademark Registration Application

If you learn that someone is trying to register a trademark that is confusingly similar to yours, you can oppose the registration.

Anyone who believes they may be damaged by registration of a trademark can file an opposition to registration with the USPTO. The opposition must be filed within 30 days of the date the proposed registration is published in the Official Gazette, the official journal of the USPTO.

If you file an opposition, it will be decided by the Trademark Trial and Appeal Board in a proceeding that is similar to a court case. You may want to hire a lawyer to file your opposition and represent you in the proceeding.

Stopping an Infringer

Not everyone who uses a similar trademark will try to register it, and someone may continue using a similar mark even if their registration application is refused.

If you believe that someone is using a trademark that is identical or confusingly similar to yours, you may want to consult an attorney for advice on whether the use infringes your trademark and how best to proceed.

Typically, the first step in stopping trademark infringement is to send a “cease and desist” letter. This letter notifies infringers that you have a registered trademark, describes the trademark and states how you believe the other party is infringing your trademark. The letter then asks the infringer to immediately stop using your trademark and threatens legal action if they continue to use it.

If a cease and desist letter does not work, you will have to decide whether to file a lawsuit to enforce your trademark rights. This is a complex decision that should be made with the aid of an attorney. The decision may depend on such factors as the cost of a potential lawsuit, the damage you will suffer if someone else uses your trademark and the likelihood that you will win.

LegalZoom offers a trademark monitoring service that will regularly monitor pending federal trademarks with the USPTO, providing you detailed feedback. If you need further legal advice, you can have access to experienced attorneys through the LegalZoom business legal plan.