Trademark Enforcement Options – FAQ

What are My Trademark Enforcement Options?

Question for Trademark lawyerAnswer: Deciding on the right trademark enforcement options may seem pretty easy, but other options exist.

While trademark owners are not required to sue all trademark infringers, not taking some type of action can weaken the trademark as a “source identifier” and weaken the value of the mark. Trademark Owners who fail to enforce their trademark entirely risk abandoning their rights to the mark. Deciding on your company’s trademark enforcement procedure and policy can be very important.

Settlement

The most obvious alternative to litigation is settlement.  Settlement can be used as a trademark enforcement tool as well and is always an option. Owners of trademark and infringers may be able to agree to some form of concurrent trademark use where one party uses the trademark in one geographic area, and the other uses it somewhere else. Another option for settling a trademark dispute is for one party to license the rights to the other. Settlement agreements allow senior trademark user to lower the risk that the trademarks value as an identifier of source will be diminished by the junior user (or it may cause the value to be weakened as a result of the license).

USPTO Oppositions

In the event the trademark infringer has a federal registration for the mark; you can file a trademark oppositions and cancellation proceedings with the United State Patent and Trademark Office. This won’t necessarily get the infringer to stop using the trademark or servicemark, but it will get their attention.

Customs and Border Control

Trademark enforcement options by US Customs
US Customs plays a valuable roll in trademark enforcement.

An additional option  for enforcing trademark rights, in the case of imported products, is to record a federal trademark registration on the US Customs Office’s watch list.  Customs screens imported goods for infringing trademarks and bars them from entry.

Litigation

If other trademark enforcement options don’t work or are not right for you, the trademark owner can file a lawsuit.  Trademark litigation is typically the most expensive enforcement option.  However, if the use significantly weakens the mark and none of these other options are available, litigation may be your only other option.

Trademark Enforcement Resources