How should you police your trademark?

Many big corporates have been labelled as trademark bullies due to the ruthless ways in which they protect their trademark right. The USPTO definition of a trademark bully is “A trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.” Policing your trademark and being prepared to take action if and when a case of infringement arises is extremely important but the way in which you do it can have a significant impact on the future success of your company.

Ensure that the brand you are approaching is actually infringing on your trademark before you take any action. Quaker Oats recently accused Quakers Oats Christmas trees farm of infringing on their trademark and were thoroughly shown up for their easily avoidable blunder.

Determine your desired goal before taking action. By doing this you can ensure that you stay in control of the situation and that you don’t cause any unnecessary friction between you and the other party.

Initially try to approach the company on a personal level to resolve the issue. You may be able to persuade them to stop infringing on your brand and by not initially threatening them with legal action they may be more acquiescent.

Send a cease-and desist-letter if you do not receive a response from the infringing company. This will prove to them that you are serious about defending your brand but that you are still willing to talk.

Seek legal advice if the infringing company refuses to respond to your friendly approach.

Be aggressive. This could have negative repercussions for your company in the long term.

Immediately threaten them with legal action. This may in fact have the opposite effect that you desire and may lead to expensive legal fees and court cases that may have been avoided if you had taken a more friendly approach.

File an infringement lawsuit against a similar brand that is outside of your trademark jurisdiction. Since they are not in your jurisdiction they are not infringing on your trademark. Furthermore if you do decide to expand your brand in the future the company that you wrongly accused of infringement may not make it an easy process.

A trademark is a worthwhile investment as it will protect your brand and allow you to enforce your trademark rights over other companies that may infringe upon your mark. However, you should always be certain that another company is infringing upon your brand before taking any action against them. If in doubt, it is advisable to consult a trademark lawyer who would be able to help you choose the best course of action and confirm if there is a case of infringement.

For advice and more information on searching, acquiring, registering and enforcing Trademarks please visit our website,
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