Where are the Trademark Police?

Companies spend a lot of time and money finding great names for themselves and their products. Many do it right and employ naming agencies and intellectual property trademark counsel to thoroughly search in advance to make sure they are legally clean, and then claim and register their names correctly. Your marketing team builds the website, prints your business cards and collateral, makes your signs and packaging, and are always careful to use the proper ™ and ® signs appropriately.

But what happens next? How do you know when someone else comes along and claims the same names or marks? Who will alert you? Who will chase them away? In short, where are the trademark police and protection squads? You’ve seen them on TV in high profile cases stopping goods at customs that are fake copies. You’ve read about major seizures of pirated software copies and titles, not to mention fake games and videos that look close to the real thing. But these are genuine fraud cases of direct copies and they are policed and enforced with normal police powers – albeit usually only when alerted by the offended parties.

But what if someone just uses the same name for a confusingly similar product in your own space through ignorance or stubbornness or simply accident?

There are no trademark police! It is a self-policing system. If someone else uses your trademarks, and you ignore them, they might keep on doing so. Eventually they may even grow and prosper, and have bigger marketing budgets and more lawyers than you! They may even argue for implied trademark rights because of continued unopposed usage.

So, please police your own trademarks. Use a professional to check them before you claim them. And then put in a simple process to check regularly. Major brand companies like Sony or IBM or GE or Proctor and Gamble have paralegals who log on every morning to check on the status of all new names and filings. Plus they use services to alert them to any usage or close filings and claims on any of their trademarks.

You probably do not have full time counsel to watch your names, but any company can take these simple precautions:

  • Properly check all names and marks before first usage.
  • Properly use the TM or SM symbols from the outset and establish your own public claims on the name(s) in your industry.
  • For key trademarks, usually starting with your company name, apply for a Federal Trademark Registration so that you can legally use the all powerful ® symbol.
  • Provide proper written guidelines for employees, partners, distributors, resellers, etc. so they use and propagate your marks correctly.
  • At least once a year, do a thorough search on your own names and note all usages. (Consider using a professional for a name audit even).
  • Ask all employees, especially those in field sales and marketing, to alert you if they see or hear any “confusingly similar” marks being used.
  • Send a formal letter to any offending parties, alerting them to your trademark claims, and asking them to change and please not infringe in the future. (This step alone can be surprisingly effective).
  • If all else fails, engage intellectual property legal counsel to file a “cease and desist” letter, before proceeding to full legal action.

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