Trademark infringement

Intellectual Property Violations | Trademark Basics

Your trademark is officially registered…  Now what?

The road to registering your intellectual property (IP) may be as simple as filling out a form and paying the fees, or as difficult as answering multiple rounds of Office Actions or facing some sort of legal proceeding.  Regardless of the ease of the registration process, all IP owners need to be prepared to handle infringement of their trademarks or patents when this obstacle arises.

Owning a trademark creates an obligation to monitor your mark. 

This means that once you own a trademark, you must actively seek out infringers and take them down.  This does not mean that you must take down thousands of sellers per day, month, or even year, but you must be able to prove that you are defending your mark in some way.  When determining how much is enough, the standard lawyer answer would be: it depends.  And it truly does!  There are many different factors to consider when determining how much due diligence a person or company has to take to show they are defending their mark (e.g., industry size, similar names, or how big the company is).

One reason it is important to police your mark is to avoid “genericide.”  This occurs when a trademarked term is used so often and by so many people to describe the same thing that it becomes generic, and unprotectable.  This has happened with many once-trademarked terms including escalator, nylon, aspirin, yo-yo, and thermos.

How to Handle Infringement

There are several ways to approach trademark violations and you may develop your own approach as you handle infringement and as your business grows.  As you combat multiple instances of infringement, it may be beneficial to work with your Intellectual Property Attorney to discuss the options they provide for monitoring and removing infringement.

Some infringers may just naturally reveal themselves to you (through advertisements or word of mouth).  To seek out others, you may want to begin searching sites that you would generally find your products on, including Amazon, Google Shopping, or Etsy.

Once you locate any instances of infringement, you may choose how to handle this.  Some trademark owners choose to reach out to each individual infringer and kindly ask that they remove the mark; others may go through the website and issue a formal takedown.  For online infringement, large websites, such as Amazon and Google have quick forms to fill out that can help you remove infringing materials from the internet.  In some instances, you may also choose to send cease-and-desist letters to the company or the website provider.

Cease-and-desist letters.

While cease-and-desist letters may be made up of formal legalese, they can also be a fun or creative way to show that you are passionate about your brand and are only issuing the takedown to protect that brand.

In 2017, Budweiser  took the opportunity to have fun with the cease-and-desist “letter” by having an actor dressed and in character as a medieval town crier read the letter to another beer company using “Dilly Dilly.”  Budweiser also permitted the company to continue selling the products they had already produced as a “limited edition” and even offered two tickets to the upcoming Super Bowl in their city.

While it is not necessary to come across as a comedian in your takedowns, you may also want to avoid the cold or rude approach if your image is important to you.  With the potential of virality that each post holds, a strongly worded cease and desist letter could be distributed to millions with the press of a button, allowing more than just the intended to read your words.

When you are issuing takedowns of any form, it is important to ensure that you are actually within your rights to do so.  Sending a takedown to an “infringer” that is not warranted may result in monetary penalties or more.  This is another reason that it may be in your best interest to consult with your Intellectual Property Attorney .

This article was prepared and written by Abbie, WD’s IP Magizoologist.  Standard, hopefully familiar-sounding, disclaimer:  Any opinions expressed here are of the writer’s.  Any information provided is for educational or informative purposes only and are not intended as legal advice.