Protecting Brands From Knock Offs and Infringement – Part I

The following is a summary of basic and advanced tips I have developed for protecting clients’ interests in their trademarks and brands.

1. Seek Registration

Often one of a company’s most valuable assets is its trademark, service mark, and/or trade dress. The best way to protect an owner’s right in its mark against use by others, dilution, or loss of good will is by registering the mark. While common law trademark protection can provide some degree of protection against others using similar marks, this protection is generally limited to the particular geographical location in which the mark is being used. Obtaining a federal registration provides added benefits to the owner of the mark, including exclusive rights to use the mark throughout the U.S. and protection against infringers. U.S. trademark protection is afforded to a trademark, service mark, and trade dress, as long as the mark remains in use in commerce and is distinctive. Once a mark is registered, there is constructive notice to the public of the registrant’s claim of ownership of the mark. Registration also provides the owner of the mark the ability to bring an action concerning the mark in federal court.

2. Trademark Marking Compliance/Website Audits

Trademark marking compliance is essential in the collection of damages and preventing the loss of a trademark due to misuse. While registration of a mark gives others constructive notice of the registrant’s claim of ownership, failure to display the mark with the words “Registered in the U.S. Patent and Trademark Office”, “Reg. U.S. Pat. & Tm. Off.,” or the ® symbol may limit the award of damages unless the infringer had actual notice. Note that use of the ® symbol with a trademark that is not listed on the Principal Register is a federal offense. If a mark in unregistered, the mark should be followed by a “TM” or “SM” (depending on goods or services) superscript to provide notice to others of the trademark. Regular website audits should be conducted to ensure all trademarks and service marks, registered or unregistered, are properly marked to protect the enforceability of the marks later.

3. Proactively Police Brands Online

Trademark owners, whether registered or unregistered, should monitor and police their brand to enjoy the benefits of their marks. One of the ways that a trademark owner can lose its mark is through abandonment. Non-intentional acts that could lead to abandonment include prolonged unchallenged third-party uses of a trademark or “genericide.” Genericide occurs when the mark or brand name becomes the colloquial or generic description for or synonymous with a general class of product or service. Genericide weakens the strength of the trademark as an identifier of the owner’s goods or services, and this severely damages the owner’s ability to later enforce the mark. Examples of marks that have fallen victim to genericide include Aspirin, Escalator, Thermos, Yo-yo, and Zipper. Xerox and Kleenex are examples of marks that came close to genericide, but were rescued by aggressive corrective campaigns. The U.S. Patent and Trademark Office explicitly states that they do not provide trademark monitoring or any similar services, so it is the responsibility of the mark owner to police against unauthorized third-party uses.

4. Register Domain Names Containing Trademarks

It is essential for a company attempting to protect its brand to register domain names that include its mark, and possibly even variations of top-level domains (e.g. .com, .net, .org, etc.) and common misspellings depending on the level of protection desired. As many businesses use their existing trademarks as their domain names to attract potential customers to their websites, third parties will often try to preemptively register domain names incorporating these trademarks. Additionally, other parties with the same or similar trademarks may obtain the domain name if they register first. Recovering a domain name from an infringer or cybersquatter can be an expensive and timely ordeal. Furthermore, since recovering a domain name requires a showing of bad faith and the current domain name holder having no legitimate rights in the mark, a trademark owner of the same mark for different goods/services may prevail if he registered the domain name first. In this sense, it is almost always cheaper to register key domain names on the front end. A few hundred dollars spent today can avoid costly legal battles later.

5. Recover Domain Names from Infringers and Cybersquatters

Third parties will often try to profit from the goodwill of another’s trademark through cybersquatting. Cybersquatting involves registering potentially valuable domain names and either: using the goodwill of the mark’s owner to attract business to their own sites; or offering them for sale directly to the company involved,or other third parties. To recover a domain name, mark owners may file suit in U.S. federal court under the Anticybersquatting Consumer Protection Act (ACPA) or choose to pursue an administrative proceeding under the Uniform Dispute Resolution Policy (UDRP). In addition to a transfer of the domain name, the ACPA provides for actual damages caused by the cybersquatting and attorney’s fees. The ACPA also provides that any cybersquatter, who in bad faith uses, sells, or tries to sell a domain name that infringes another’s trademark, may be subject to penalties of up to $100,000 in statutory damages per domain name abuse incident.

6. Don’t Delay. Don’t Over-Threaten Either

Delaying filing suit and moving for injunctive relief can be fatal or significantly decrease the likelihood of obtaining injunctive relief against an infringer. Since there is no express federal statute of limitations, courts have often applied the equitable doctrine of laches, which balances a mark owner’s unreasonable delay in filing suit with the resulting prejudice caused to the defendant to determine whether a claim is untimely. Due to the broad discretion this provides courts, it is in the mark owner’s best interest to file early. Over threatening rights can result in the filing of a declaratory judgment action and additionally establishes a specific date by which the trademark owner became aware of the unauthorized use. Therefore, it is usually best not to threaten trademark rights unless the owner is prepared to take immediate action.

Conclusion

The above 6 techniques provide an array of tools to protect brands from counterfeiting, knock offs, and trademark infringement. Best practices are to use of multiple techniques to safeguard brands.