Defending Your Trademark

Features and Considerations:

• Legal proceedings occur at the TTAB, not in federal court.
• Costs can escalate quickly; settlement may reduce expenses.
• Defenses might include challenging the opposer’s claims or demonstrating continued use of your trademark.
• The outcome affects the registrability and enforceability of your trademark.
• Monitor the marketplace and trademark registries for any signs of infringement or unauthorized use of your trademark, including similar names or logos.
• Know the legal grounds for trademark infringement and the criteria for proving it, such as likelihood of confusion among consumers.
• Develop a clear strategy for enforcement, which may include cease-and-desist letters, negotiations, or, if necessary, litigation.
• Ensure your trademark remains distinctive and enforceable by using it correctly and consistently, which can also include regular renewal filings.

Examples:

1. Responding to an opposition: demonstrate the differences between your mark and the opposer’s mark.
2. Challenging a cancellation action: provide evidence of continuous use of the trademark.
3. Cease-and-Desist Success: A small business successfully stopped a larger company from using a confusingly similar logo by sending a well-drafted cease-and-desist letter, highlighting the potential for consumer confusion and the business’s prior use of the mark.
4. Litigation Victory: After discovering a competitor using a nearly identical trademark for similar products, a company pursued litigation and won damages for infringement, securing an injunction against the competitor’s further use of the mark.
5. Coexistence Agreement: Two companies with similar marks in different regions reached a coexistence agreement, allowing both to continue using their marks under specific conditions, thus avoiding costly legal battles.
6. Trademark Watch Service: A brand utilized a trademark watch service, which identified a potentially infringing trademark application. The brand filed an opposition, preventing the registration of the conflicting mark.

Why This Matters:

Defending your trademark is not just about protecting a name or logo; it’s about safeguarding the business identity and reputation you’ve worked hard to build. Infringement can lead to customer confusion, diluted brand identity, and ultimately, a loss in consumer trust and business value. Proactive defense measures can prevent these outcomes, ensuring that your trademark continues to serve as a unique identifier of your products or services. It’s also a way to uphold fair competition in the marketplace, ensuring that businesses thrive based on their own merits and not through the unauthorized use of others’ intellectual property.

Call to Action:

1. Implement Regular Monitoring: Establish a routine to check for infringements, using both manual searches and professional trademark watch services.
2. Educate Your Team: Ensure that your staff understands the importance of the trademark and how to spot potential infringements.
3. Prepare Enforcement Templates: Have cease-and-desist letter templates ready for quick action against infringers.
4. Consult Legal Professionals: When necessary, consult with a trademark attorney to understand your options and take appropriate legal action.

External Resources:

• Trademark Opposition Proceedings (CIPO): https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/opposition-proceedings
• Practice in trademark opposition proceedings (CIPO): https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/trademarks/trademarks-opposition-board/practice-trademark-opposition-proceedings
• USPTO Trademark Trial and Appeal (TTAB): https://www.uspto.gov/trademarks-application-process/trademark-trial-and-appeal-board-ttab
• Trademark Opposition Procedures (WIPO): https://www.wipo.int/meetings/en/doc_details.jsp?doc_id=66014
• The EUIPO Mediation Centre (EUIPO): https://www.euipo.europa.eu/en/manage-ip/mediation-centre

Advanced Topics:

• Counterclaims in TTAB proceedings: Strategies for an aggressive defense.
• Strategies for defending against specific claims like nonuse or descriptiveness.
• The interplay between TTAB proceedings and subsequent or concurrent federal court actions.