Once a trademark has been registered, it is often the responsibility of a trademark lawyer or agent to adequately police the marks. Trademarks must be actively used and defended. A company which fails to defend a trademark against infringement may lose some or all of its exclusive rights. Obviously, the most effective trademark policing program is one that allows a company to maintain and maximize its rights while avoiding the need for expensive litigation. This can be accomplished by setting up a watch service to monitor third party applications which may be similar, drafting and sending out cease and desist letters to suspected infringers and filing opposition (against applications) and cancellation (against registrations) proceedings. Opposition and cancellation proceedings are often much less expensive than a full-blown trial and can be a cheaper means of enforcing one’s rights.
Trademark owners must always attempt to find the proper balance and avoid overreaching by attempting to stop trademark uses which are unlikely to cause consumer confusion. Also, there can be instances where a large company’s attempt to stop a much smaller company from using a trade mark may be interpreted as “bullying” or “picking on the little guy” and turn into a public relations nightmare. On the other hand, any use by third parties of a particular mark may be used against the trade mark owner in later proceedings as an example of why confusion isn’t likely (if there are other market participants simultaneously using the same or similar marks, there is a presumption that such co-existence weighs against a likelihood of consumer confusion). This is a struggle confronted by the trademark departments and counsel of all major brand owners.
Personally, I’m in favor of squashing the little guy. Especially when the “bully” is paying my bills.
For more on this topic and other areas of intellectual property law, see TransLegal’s online course “The Legal English of IP Law”.
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