Intellectual Property

Protecting Your IP: Asserting and Defending Your Trademark Rights

So your trademark application has been approved and your trademark has been officially registered and published in the Official Gazette. Now what? We continue our blog series on protecting your IP by exploring how to assert your trademark rights and ensure that you take advantage of your federally registered trademark.

Defending Your Trademark Rights
One important thing to note is that it is the responsibility of the trademark owner to protect its trademarks and assert its rights. You are required to monitor the use and potential infringement of your trademark. If you don’t, then others can use your mark and capitalize on your company’s reputation that is attached to your trademark. If you find that another company is using your trademark, you should act quickly to put the company on notice that you do not authorize its use of your trademark and you request that they stop using your trademark immediately. Typically, many trademark owners will send a cease and desist letter to the infringing company.  If the infringing company continues to use your trademark, you can bring a federal lawsuit to enforce your exclusive rights to use your trademark.

If you do bring a lawsuit against a company that is using your trademark, you can seek damages, including: (i) the defendant’s profits associated with the use of your trademark, (ii) any damages sustained you sustained from the infringement, and (3) the costs of bringing and prosecuting the action. Further, you can seek an injunction, i.e. ask that the court order the defendant to cease using your trademark until the case is resolved, and attorney fees may be awarded. Depending on the circumstances, the plaintiff may elect to have statutory damages assessed, which can substantially increase the amount of damages that are recoverable.

Opposing a Trademark Application
If you believe that your company may be damaged by another’s trademark registration, you can file an opposition claim—you can also bring a cancellation claim if the mark has already been registered. This will spark a formal proceeding (similar to a trial) with the Trademark Trial and Appeal Board (TTAB). Generally, the party bringing the action is complaining that the mark is confusingly similar to a mark that is owned by it.

After Your Mark is Registered
A trademark will be officially registered only after the mark has been published, the 30-day opposition period has expired, and proof of use has been filed—proof of use is required if you file a Class 1(b) trademark application based on the intent to use the mark at a later date. The initial duration of your federal trademark registration is 10 years, and you can renew the registration for another 10 years, for a total of 20 years.

Keep in mind, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit that provides certain information to keep the registration alive. If no affidavit is filed, the registration will be canceled.

Before your mark is registered, you can use the TM (trademark) or SM (service mark) designation to put the public on notice that you own, or are claiming you own, a particular trademark. It is not necessary to have a registration, or even a pending application, to use these designations. Once your trademark is officially registered with the USPTO, you can use the registration symbol (®). Using the appropriate symbols next to your trademarks is one important step you can take to assert your claim that you own a particular trademark.

If you’d like to learn more about registering your trademarks or protecting your trademark rights, please feel free to contact us today to schedule your free initial consultation.

        


Gavin Johnson

Gavin enjoys craft beer and is learning the art of brewing.


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