United States: Nutter’s IP Bulletin How-To Series On Branding: What To Do Once Your Trademark Registers—Defensive Monitoring And Enforcement

When last we met, you had successfully navigated the trademark-examination process and were gazing with pride and happiness upon your Certificate of Registration from the United States Patent and Trademark Office.

You have indeed arrived at a very important milestone in the journey of your source-identifier from mere trademark to iconic brand.

But trademarks are like liberty: they require eternal vigilance, even after they are registered. How can one exercise such vigilance with reasonable expenditure of time and money?

Watch services

The same search firm that provided you with screening and availability services, if you indeed chose to engage such a firm, can now provide you with "watch" services. These services come in all manner of breadth and cost. You can have the web scanned 24/7 for any use of anything identical or confusingly similar to your mark. The parameters of this level of continual scrutiny—degree of similarity, goods and services involved, geographic territory, language(s), etc.—need to be established in order to avoid "TMI (too much information) syndrome." The trouble with TMI is obvious: you miss the material forest because of all the immaterial trees.

For most trademark owners, it may make more sense for them to limit their watching to actual filings in trademark offices in those countries and other jurisdictions, e.g., the European Union's OHIM (Office for the Harmonization of the Internal Market) Trademark Office in Alicante, Spain, and WIPO (World Intellectual Property Office) in Geneva, Switzerland, where competitors and infringers (whether innocent or intentional) are likely to surface. While you still need to set some "watch" parameters, you can afford some play in the joints—and still avoid TMI—because you are not scouring the web everywhere and all the time, but only monitoring formal applications that are laid out in readily comprehensible formats that enable the reviewer to determine quickly whether she's looking at something that bears further investigation or more immediate and aggressive follow-up.

Most of the time, it is difficult on a first inspection of another, similar mark used for goods or services arguably related to yours, to be definitive about (a) the potential for confusion, and (b) the extent of injury should it materialize. So sometimes it is best simply to wait and see, as unnerving as this can be.

One thing is certain, however. When a third party's applied for mark is problematical, the problematical-ness will only be aggravated if the mark becomes registered while you are "waiting to see."

A third kind of watch can help you here. Once you've identified a problematic application, whether through your own diligence (or happenstance) or via a "watch" on filings, you can put in place a "monitor" watch, which will keep you abreast of significant developments in the examination process, such as abandonment, suspension, or publication for opposition. This last development, as its name implies, is when you need to decide to fish (oppose the application), cut bait (let the application proceed), or temporize (file an ex parte request to extend the deadline for an opposition). Requests for such extensions of up to 90 days are usually granted automatically and within moments of being filed (at least in the United States). The Trademark Office likes to give potential opposers adequate time to think things over and the opportunity to enter into negotiations.

Litigation

Sometimes you will have no choice but to initiate a lawsuit for one or more of infringement, dilution, unfair competition, and cybersquatting (a non-exclusive list of possible grounds). But heed the wisdom of a canny trademark lawyer first imparted to me 30 years ago and vindicated by time ever since: "Evaluate the strength of your trademark case on a scale of 1 to 10 ("10" being the strongest possible case); then, if your case isn't a '20', don't sue." Many a truth is spoken in jest.

Two other things about litigation

First, it has become significantly more difficult for the plaintiff to obtain a preliminary injunction in a trademark infringement case. This is important because the grant or the refusal of a preliminary injunction is often the whole ballgame. If the preliminary injunction is entered, the enjoined defendant faces the prospect of defending, for a long time and at great expense, a mark that is barred from the marketplace by the injunction and that, even if her defense is successful, she will have to resuscitate (no easy task) in the marketplace after the long lawsuit hiatus. Many a preliminarily enjoined defendant will make the sensible decision to refrain from waging such dubious battle. On the other hand, the disappointed plaintiff (if preliminary injunctive relief is denied) faces the prospect of litigating an issue regarding which the court has already decided she does not have a substantial likelihood of prevailing on the merits. Many a plaintiff at this point will decide to cut her losses.

The recent trend of the law has been adverse to trademark plaintiffs because it has made it more difficult to obtain early in the litigation an (often decisive) preliminary injunction. And this is because the presumption that infringement of a trademark causes irreparable harm to its owner—a finding of irreparable harm to the plaintiff being a prerequisite to preliminary injunctive relief—has been replaced with a requirement that the plaintiff provide evidence of such irreparable harm. In the case of an infringing counterfeiter palming off a shoddy product under a plaintiff's well-known trademark, such evidence is not hard to come by. But in "closer" cases? The plaintiff no longer gets her presumption a/k/a the benefit of the doubt.

Second and last, be aware of a possible consequence of the dispatch of a cease-and-desist letter from your home state A to an alleged infringer in another state B. The far more frequent response to a cease-and-desist letter is another letter from the accused infringer or his lawyer. The content and tone of this letter in reply will then indicate where the parties are headed—Armageddon, love fest, or somewhere in between.

But another response by the accused infringer may be a lawsuit in his home state B initiated by the filing of a "complaint for declaratory judgment." Look, Your Honor, says the accused infringer, here there is an actual case or controversy over which Your Honor has jurisdiction because Accuser in State A says I am infringing her trademark, and I deny this; please, Your Honor, enter your judgment "declaring" that there is no infringement here.

When this happens, the infringing Accuser is stuck in the mirror image, in state B (the more distant, the worse), of the litigation she was hoping to avoid in home State A. The issue is still infringement, but in this "declaratory judgment" action, it is the defendant who is alleging infringement, and the plaintiff who denies it. It's like a pas de deux at the ballet where the ballerina wears tights, and her male partner wears a tutu! (Pace Les Ballets Trockadero de Monte Carlo.)

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

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