How Do I Enforce My Trademark Rights?
Trademarks rights – which arise out of use and are protected by common law as well as federal registration – are enforced through a number of strategies, including cease and desist letters, UDRP proceedings, litigation in federal court and, in some cases, working with U.S. Customs and Border Control.
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Trademark rights, whether they are protected at common-law or by federal trademark registration, can be enforced in a variety of ways. The most common is likely the cease and desist letter, which consists of written notice to the infringer advising of the owner’s rights in the trademark (and referencing all prior rights and federal registrations applicable). Typically, a cease and desist letter will identify ways in which the user is infringing on the trademark—for example, in online or website use of the mark, sale of unauthorized goods bearing the mark, or advertising or marketing using the mark—and insisting that the user immediate cease and desist all such use (and any other infringing use) in order to avoid further conflict, including a potential lawsuit and damages. Cease and desist letters are most successful when the user is unaware of the infringement and had no intention of using another’s mark.
Dealing with intentional infringement, on the other hand, often requires more than a cease and desist letter (although a letter is still a good starting point as any use post-letter is evidence of willfulness). Often, a more aggressive approach is needed to halt intentional infringement or that of a user who is not knowledgeable in trademark law and incorrectly believes his or her use is not actionable. In such cases, it is often necessary to file a lawsuit in federal court. One potential upside to this strategy is the ability to recover damages. Sometimes, the actual filing of a lawsuit is enough to get the user’s attention and either the user does not answer the suit (resulting in a default judgment) or the parties are able to reach an early settlement. In other instances, it is necessary to fully litigate the claim in order to halt the unlawful use of a trademark. Trademark owners willing to file suit as a means of enforcement should always be willing to see the lawsuit through to its conclusion if necessary.
Separately, if the infringing use is through a domain name incorporating the trademark, the trademark owner can pursue a Uniform Dispute Resolution Policy (UDRP) proceeding to have the domain stripped from the infringer and transferred to the trademark owner. This form of protection is also effective against what are known as cybersquatters – third parties who preemptively register domain names incorporating the trademarks of others for the sole purpose of selling the domain names to the highest bidder. The UDRP governs an administrative or arbitration procedure before one of four of the following organizations: (1) the World Intellectual Property Organization (WIPO) in Switzerland; (2) the National Arbitration Forum (NAF) in the U.S.; (3) resolution in Canada; and (4) the CPR Institute for Dispute Resolution (CPRADR) in the U.S. The trademark owner files a complaint with one of the four organization described above and prove: (1) that the domain name is identical or confusingly similar to a trademark in which it has rights; (2) the current domain name holder has no rights or legitimate interests in the domain name; and (3) the domain name has been registered and is being used in bad faith. In most cases, the arbitration body will issue a ruling within a few months. A UDRP arbitration is less expensive than civil litigation because the documents are limited and there is no discovery, very little briefing, and no appearance before an arbitrator. Decisions can be rendered within two to three months of the ICANN filing. However, such proceedings are not without risk, and any complaint should be discussed in depth with experienced IP counsel prior to filing, as a plaintiff who complains about a domain name in bad faith can be found to have committed reverse domain name hijacking (“RDNH”) resulting in a harsh response from the UDRP panel, negative publicity, and damage to the company’s reputation.
Finally, if the trademark at issue is being infringed through the importation of counterfeit goods, it is possible to register one’s mark with U.S. Customs and Border Protection in an effort to identify counterfeit goods upon attempted importation into the country. Some companies even use watermarks or scannable codes imbedded in their products to make such detection easier.
Klemchuk PLLC is a leading IP law firm based in Dallas, Texas, focusing on litigation, anti-counterfeiting, trademarks, patents, and business law. Our experienced attorneys assist clients in safeguarding innovation and expanding market share through strategic investments in intellectual property.
This article is provided for informational purposes only and does not constitute legal advice. For guidance on specific legal matters under federal, state, or local laws, please consult with our IP Lawyers.
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