How can you realistically enforce your trademarks?
Trademark enforcement is not only for millionaires and big companies. Startups and small businesses can use cost-effective ways to stop or discourage trademark infringement. By employing smart tactics, you can increase trademark protection while spending less.
Need to register or enforce your trademark? Call US patent and trademark attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to explore cost-effective strategies to get the most trademark protection for your buck.
First Steps to Trademark Enforcement
Before diving into trademark enforcement options, take the following preliminary steps to boost your trademark rights.
Step 1: Get Your Trademark Application Filed Properly
Without a doubt, it will cost you more money and time to enforce an unregistered common law trademark. Do everything you can to register your trademarks.
If you haven’t done so already, have your trademark application filed by a patent and trademark attorney with experience in the potential obstacles that might arise. Though your mark might not be registered yet, having a pending trademark application will at least start you on the journey toward registration. It will take 8-10 months to hear back from the USPTO, and silly errors will cause further delay. Do not file it yourself unless you have almost a year to burn and you’re OK with the possibility of further delays and rejections that might have been avoided upfront.
An earlier filing date beats a later filing date. For early filers, the USPTO can become an ally by rejecting or suspending subsequently filed trademark applications.
Step 2: Enroll in Amazon Brand Registry
Consider enrolling in Amazon Brand Registry if your trademark covers goods that can be sold on the e-commerce platform. While registration will ultimately be required, a pending trademark application is sufficient to enable Amazon sellers to begin enrollment.
Step 3: Record Your Registered Trademark with US Customs
A registered trademark can provide you with so many advantages. To block the import of infringing goods, you can record your trademark registration with US Customs. Assuming your registered trademark exists on the Principal Register and covers goods, you can now benefit from governmental enforcement efforts for little money.
Step 4 (done for you): Block Registration of Similar Trademarks
OK, this is not really a step you have to take but it is worth mentioning. Once your trademark is registered, the USPTO will reject future applications for similar marks. The beauty of this privilege is that it is done for you. The USPTO may reject future trademark applications, and you may not even know or hear about it.
If you wish to monitor the filing or approval of similar trademarks, you can pay for trademark monitoring services. Some trademark owners with greater financial resources may adopt this more aggressive approach to oppose similar marks from being registered.
Should you send a trademark cease-and-desist letter?
Whenever possible, leverage the effort and time of others to enforce your trademarks. It’s perfectly legal and even encouraged. But what is your next step when the efforts of others are not enough?
Sending a trademark infringement cease-and-desist letter is a serious matter. It can backfire spectacularly if you are not careful. For example, the recipient of your C&D letter may turn out to have trademark priority. With the tables turned, they are now accusing you of trademark infringement!
Another risk is the possibility that the recipient may file a declaratory judgment lawsuit in their home state. As a result, the trademark owner is not only forced to litigate, but they must do so in an inconvenient venue which will substantially increase legal costs.
How much does trademark enforcement cost?
Trademark litigation is not for the faint of heart. It takes determination and, of course, a lot of money. Unless you reach an early settlement, the cost of a trademark infringement lawsuit may range from roughly $400,000 to over $2 million depending upon the amount at stake.
If the cost of a trademark infringement lawsuit is prohibitively high for you, explore the possibility of litigation funding. Recognize, however, that most litigation funders will not consider financing an infringement lawsuit unless both the merit and potential monetary recovery are strong.
What are alternatives to trademark infringement litigation?
Suppose you do not have hundreds of thousands of dollars and a litigation funder has not agreed to take your case. What are your options then? In these situations, it pays to have an experienced patent and trademark attorney on your side.
Is the infringer selling on Amazon? Besides submitting a report of infringement, would it make sense to file a trademark cancellation against the USPTO trademark registration on which their Brand Registry enrollment is based? Would an investigation into their usage lead to findings that can support a nonuse challenge?
Need to make trademark enforcement a reality?
One size does not fit all when it comes to enforcing your trademarks. Even a more modest budget can yield significant results. To get the most bang for your buck, call Vic at (949) 223-9623 or email vlin@icaplaw.com to explore how we can help you stop trademark infringement.
