1. You must Police your Trademark.
Once you successfully receive your federal trademark registration, you’ve done all you can and can now take a step back and relax, right? Nope. As a federal trademark owner, you must continually monitor and police your trademark to ensure that other companies are not infringing on your rights.
From a legal standpoint, by allowing other companies to use confusingly similar trademarks, you risk trademark dilution, which occurs when several companies have used similar trademarks for extended periods of time. The trademark infringer may argue that since you’ve allowed the trademarks to coexist in the marketplace, you must not have suffered much harm. So, by sitting on your trademark, and not actively policing it, you risk losing the broad federal protections of your trademark.
2. You can Police the Entire USA
As a federal trademark owner, you have the legal presumption of the validity and ownership of your trademark across the entire United States. We no longer live in the days when we are only competing with companies in our own neck of the woods. With e-Commerce and social media, our competitors span across the USA, from Maine to Alaska.
3. Policing and Monitoring Takes Several Forms
There are several ways to monitor and police your trademark. Here are three specific considerations:
First, Google is your friend. You should be consistently googling your trademark to see if any competitors are infringing on your rights.
Second, the USPTO publishes the Trademark Official Gazette every Tuesday, which includes applications that have recently been published but have not yet registered. If you see a published trademark that you believe is confusingly similar to yours, you have 30 days from the publication date to file either an opposition to registration or a request to extend the time to oppose.
Third, people often hire another company to monitor their trademarks for a monthly or yearly fee. Make sure to read the reviews of any web site or law firm before choosing this option.
4. Cease and Desist Letters are only the Starting Point
Cease and desist letters are often used as the first step in enforcing one’s trademark rights. But that doesn’t mean it’s always the last step.
Remember that, in whatever negotiation or communications that take place between you and your infringer, you are in the unique position of being able to sue for trademark infringement suit in a federal court.
Only a federally registered trademark owner has the right to bring a trademark infringement suit in federal court. With that knowledge, you can negotiate from a position of power.
5. Know Your Recipient
Ensure that you are sending the cease-and-desist letter to the proper recipient. If the infringer is a large corporation, for instance, you would try to find the contact information of the General Counsel on the web site. If it is a smaller business, you would find the contact information of the CEO or owner. You also want to send the email directly to that person, and not the “general” company’s email.
