What Can Happen if You Don’t Watch and Take Action Promptly?
Once you pick and legally clear your mark and commit to it, you need to immediately begin watching for anyone who invades your mark turf.
The best reason to conduct watching is to nip problems in the bud. If you identify and contact a user of a confusingly similar mark as soon as it starts usage, it may be amenable to making a name change because (a) it will not yet have built goodwill (consumer recognition) in the name, (b) it may not yet have invested much money in the name, and (c) if it’s a new business, it probably doesn’t have much money with which to fight you. If the user becomes entrenched with the mark, the opposite may become true: (a) it may have built goodwill in the name, (b) it may have spent a lot of money to develop the name, and (c) it may have grown the economic power to fight back.
Also, marks require continual care and attention or they can be lost. If you know or should have known that an entity is infringing on your mark and you don’t do anything about it, eventually it will become too late to take action. Something called “laches” or “estoppel” arises. In plain English, this means your delay in taking action against an infringer, coupled with the infringer’s continued investment in its business under the name it adopted, may prevent you from doing anything to stop the infringement. In some situations, a delay in taking action of only several weeks can be enough to foreclose ever taking action against a target.
In addition, if others start to encroach on your mark rights by adopting confusingly similar marks for similar goods and services, the overall power of your mark may decline – your mark turf shrinks. The more you allow folks to crowd your mark, the less capable your mark becomes of pushing away imitators. Eventually, your mark rights can die from too much encroachment.
Also, whenever someone applies for mark registration, the U.S. Patent and Trademark Office (the “USPTO”) will publish that application before granting the registration. Such publication creates a 30-day window for objecting to registration, such as objecting on the ground of mark infringement. Generally, you have more leverage and more legal options if you object to a potential mark registration during the opposition period than you do in waiting until the registration has issued.
You should resist the temptation to brush off possible infringements of your mark. In the past, we often have heard from a new client who knew of a possible infringement but sat on the issue, waiting to see whether the putative infringer would get business traction. Such a “wait and see” approach is the wrong way to go. Waiting too long may limit your legal options, weaken your mark, greatly increase the expense of dealing with the foe, and, potentially, destroy your mark.
Ultimately, mark rights (and all intellectual property rights) are like other kinds of property you might own – land, buildings or hard assets. They require regular upkeep and must be protected against vandals and squatters. Such regular upkeep costs money, just as with tangible assets. It all comes down to realistic planning and budgeting.