Among those businesses that are savvy enough to understand that their business and product names are trademarks to be protected, most also understand that it is their job to enforce their own trademarks. There are no trademark police. The USPTO does not have roving agents checking that no one is infringing trademarks. Policing and enforcement is the job of the mark owner, and that much is well understood. But, what many do not understand is that they have an affirmative duty to police and enforce their trademarks, and failure to do so could be interpreted as abandonment resulting in a loss of trademark rights. So, even with a valid registration that you have used and diligently renewed over the course of many years, a court may still find that you have abandoned your mark because you failed to enforce it, or that you have acquiesced to infringement and therefore cannot enforce your trademark.
That is unquestionably a severe penalty, but fortunately for trademark owners it is also very easily avoidable. The bar is actually quite high for establishing abandonment and acquiescence. As long as a trademark owner takes action within a reasonable amount of time the harsh penalties for inaction generally do not apply. The key is to have systems in place for detecting infringement when it occurs, assessing the case to establish whether it is one that you really do need to pursue, and then taking appropriate action. In this way adverse uses can be quickly uncovered and addressed before they become a serious threat to your trademarks.
Clearly, it is not feasible or even possible to manually watch every corner of the Internet, offline brick-and-mortar stores, and endless print publications for instances of infringement. So, what to do? The answer is really very simple. Use automated searches to simplify the task of policing your trademarks, and when you become aware of an instance of possible infringement, call your attorney immediately. This is not a matter that can wait; it needs to be dealt with expeditiously. Actually, in most cases your attorney will be the one to call
you because he would be the one formulating and monitoring the automated searches.
As a side note, it is also important to maintain an
accurate trademark registration. In other words, when renewal time comes around, you have a duty to review the description of goods and services and verify that it is still accurate. If you have discontinued any of the items in the description, they have to be removed, and failure to comply with that requirement will jeopardize the validity of your registration.
Stay tuned for more of the Top 10 IP Mistakes.