How To Police and Enforce Trademark Rights

Once you obtain a trademark registration the next step is to properly monitor and enforce your trademark rights.

Enforcing a trademark registration is critical to protecting your company’s reputation and goodwill. To properly enforce a trademark, you should be conducting regular internet searches, monitoring social media, and visiting brick-and-mortar stores to ensure no competitor is using the same or similar trademark.

The scope of your enforcement can depend on your time, your budget, and your resources. However, investing in enforcing your trademark rights makes sense since you’ve already gone through the lengthy process of getting a registered trademark, put money and effort into building your brand, and do not want to lose consumer trust.

If you do not monitor and police your trademark, you can also find yourself in expensive litigation and may wish you took these steps beforehand. This article discusses our suggestions for trademark monitoring and enforcement once a trademark registration has been issued.

1. Monitor the marketplace for similar trademarks

Owning a trademark does not mean you own the word for everything and forever, so the first step to enforcing your rights is to determine how you intend to use your trademark. You began this process in the trademark application when you defined your goods and services; however, a registered mark also grants you protection in the “natural zone of expansion” of your goods and services.

For example, if you filed for a non-downloadable note-taking software, it’s highly likely you would eventually produce a downloadable note-taking software, so you would be able to enforce your rights against competitors in those fields. Another example is a band that produces music videos but has not yet toured – they would be able to enforce their rights against a band that performs live.

Once you have determined how you intend to use your trademarks, the next step is to monitor the marketplace for infringement on your trademark rights. It is your responsibility as a trademark owner to monitor your mark for potential infringement and take the appropriate enforcement steps. If you do not do this, you may find that the scope of your rights within the trademark has been narrowed by minor infringements over time.

The two important considerations when considering potential infringement is:

1. How similar is the name to my registered name? Or logo to my registered logo?
2. How similar are the goods/services to my goods/services?

If the answer is “too close,” you likely have a good chance to enforce your rights.

There are two main trademark monitoring strategies to implement when searching for potential infringement.

a. Monitor Google and social media for trademark infringement

Not everyone who uses a company name or brand name files a trademark application. This is known as common law usage and it can turn the marketplace into the wild west of trademark enforcement.

The broadest way to start the search for trademark infringement is through a Google search for your business name. To ensure that you are constantly monitoring the marketplace with very little effort, set up an alert through Google. A Google Alert is a way for you to be consistently monitoring the Internet for mentioning of the term(s) you specify. When Google finds an instance of your specified term(s), it will send you an email.

Organic searches can also be conducted on social media, such as Facebook, Twitter, Instagram, TikTok, or whatever the next new social media is! Some entrepreneurs use these platforms, as there is no real start-up fee associated with creating an account, and they can gain popularity at record speed.

A more difficult search can be for businesses that don’t offer online sales or market themselves online; however, with third-party review sites like Yelp or Angie’s or third-party delivery services like Uber Eats or DoorDash, you can find these potentially infringing brick-and-mortar stores across the country.

Since the internet offers so many opportunities for people to market themselves, it also offers endless ways for you to find possible infringers. It’s pertinent to remember that while some of these entities may be unaware that you have rights within a mark, they can still be infringing upon your rights.

When reviewing the results of these searches or alerts, it’s important to consider the following. Do any of the results:

1. Use your name and similar services?
2. Use a similar name but the same services?

b. Monitor new trademark applications submitted to the USPTO

A more straightforward way, and maybe easier, way of finding people who may be infringing on your trademark is to look at new trademark applications filed with the USPTO. However, the USPTO receives thousands of trademark applications a day, leading many trademark owners to use a trademark monitoring service, which will flag filings that are similar to yours in name and goods/services.

USPTO filings can be found through TESS, the USPTO’s own search portal. Each new filing will contain key information, such as what goods/services the applicant intends to provide, the date the applicant applied for the mark, and the date the applicant began using the mark. This information is helpful in knowing if you can enforce your trademark rights against an infringer.

In addition to being a slightly easier process to enforce against, trademark applications are arguably more important to police because if those applications were to register, the owner also has presumed nationwide rights. This would give your competitor the same presumption of rights that you have, provided the USPTO would allow the mark to register.

2. Evaluate trademark enforcement targets carefully

Once you become aware of potential trademark infringement, there are a few considerations to keep in mind, before you begin enforcing your rights:

1. Did I start using the name first?
   If they used it before you, they could have grounds to challenge your trademark registration, and you may accidentally cause the termination of your own rights.
2. How long has the infringer been using the name?
   If they’ve been using it and “co-existing” with you for 5+ years, they could argue that no one is getting confused by the similarity, and you could lose your chance to enforce your rights.
3. Is the infringer located within the United States?
   If you only own a trademark within the United States and they’re a foreign company, your rights are limited to their U.S. customers, unless you want to file international trademark applications. This question is inconsequential if your potential infringement was found in a newly submitted trademark application to the USPTO.

Sometimes these questions can be difficult to answer, so it can be beneficial to err on the side of caution and engage the services of a licensed trademark attorney. If you start an enforcement action incorrectly, just remember, the other side could turn the tables on you. It is crucial to ensure your enforcement is justified before you reach out to an adverse third party.

3. Choose the best trademark enforcement tactic

Now that you’ve created a list of competitors and infringing marks, how do you actually enforce your rights? There is a multitude of ways, and it depends on how the infringer is using the mark.  Here are some of the most common trademark enforcement tactics:

a. Cease-and-Desist Letters

If you can find contact information for the infringer, you can send a letter to the infringer directly. There’s always the chance they’re an innocent infringer totally unaware of your rights, and a friendly letter may be the easiest way to find a compromise.

In these letters, you can ask for them to change their name, provide more information on how they’re using the name, and ask for their accounting numbers under the infringing brand.

Having an attorney draft a cease-and-desist letter can give it an air of professionalism and can also ensure the proper research is done before risking your own marks rights.

b. Take-Down Notices

If a cease-and-desist letter was unsuccessful, or if you can’t find any contact information, you can always go through social media platforms or marketplaces to remove the infringing accounts or listings. For example, Instagram and Facebook have specific channels for submitting intellectual property violations such as trademark infringement in usernames or account names. Additionally, third-party marketplaces such as Etsy have similar avenues for intellectual property submissions to stop infringers from profiting off your brand.

If nothing else, this can help you get the attention of an infringer who may be ignoring your letters. This also can interfere with your infringer’s business, so it is a more adversarial approach than a letter.

c. Domain Disputes / Uniform Domain-Name Dispute-Resolution Policy

If you happen to come across a website that is “squatting” on your trademark in its URL, and you believe the website owner did this in bad faith, there are also options. There is a complaint called “Uniform Domain-Name Dispute-Resolution” (“UDRP”) that you can file with multiple entities, such as FORUM, to reclaim the domain name. This is a costly but swift filing and can give you the rights back to the domain name so no one else can infringe upon the trademark in the future.

The downside to UDRPs is that you have to prove the infringer had bad faith when they picked a similar name – this can be done by proving typosquatting, showing similar services pages solely for profit, or improper redirects.

Typosquatting occurs when an entity changes one letter within a URL, in order to “squat” on the URL.

d. Letters of Protest

If you find an infringing application before the USPTO has completed any review of the application, you have a chance to submit a letter protesting the application to the USPTO.

The USPTO has a special division that will then look over this “Letter of Protest” and pass your complaint along to the Examining Attorney assigned to the application. This will not guarantee that the USPTO will refuse the offending trademark, but it is a non-adversarial way and one of the most inexpensive ways to alert the USPTO of your concern.

e. Notices of Opposition

f you didn’t catch the infringing trademark filing before the USPTO approved the application, you can file a Notice of Opposition against the mark. As part of the trademark registration process, each trademark gets “published” for businesses, individuals, and other trademark owners. This allows trademark owners the opportunity to oppose the registration of a potentially infringing mark.

A Notice of Opposition is a formal proceeding that occurs before the Trademark Trial and Appeal Board (TTAB), and where the infringing applicant has the opportunity to defend itself and its trademark.

f. Petitions to Cancel

If you’re only alerted to the existence of the trademark after it’s federally registered with the USPTO, or you find a registered trademark that you have prior rights to, you can file a Petition to Cancel. In a Petition to Cancel you explain to the TTAB why they should revoke the registration of the infringing mark.

Cancellations are also adversarial proceedings where the infringing registrant is given the opportunity to defend their rights.

g. Lawsuits in Federal Court

Typically, federal litigation is the last option when it comes to trademark enforcement. This is because it is the most formal, expensive, and lengthy trademark enforcement method. That said, filing a trademark lawsuit in federal court is also typically the most effective way to get someone else to stop using your trademark and the only way to obtain court-ordered damages and attorneys’ fees.

Final Thoughts

It is your responsibility as a trademark owner to monitor, enforce, and police your registered trademark(s). Failure to do so can lead to a narrowing of your rights within the mark.

If you want to get a head start on monitoring your trademark, or you have found an infringing trademark and want professional help on how best to enforce your rights, feel free to reach out to Gerben IP.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.