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Keep Your Trademark Records Close, and Your Competitor’s Records Closer

February 21, 2017

In the age of instant information, there is no excuse for sloppy record keeping in your business. While it’s important to keep track of your sales and expenses for tax purposes, it’s just as important to keep track of your trademark use throughout the marketplace. Why? Because failure to prosecute illegal uses of your trademark may actually cause you to lose trademark protection.

For example, if you have a trademark on the phrase “Eat At Joe’s”, you have the right to keep others from using that mark in their service or product. However, let’s say you find someone using the mark and don’t do anything about it. There are a couple of issues that could keep you from defending your mark down the road.

First, the infringer may build greater strength in their use of the mark, which may keep you from prosecuting them in the future. Even though you are the rightful owner of the mark, the infringer’s strength in the mark could hurt any future challenges you bring against them. A court may hold that your failure to prosecute the infringement amounted to acquiescence (or acceptance of the competitor’s use). The longer you take to enforce your rights, the more likely an infringer can gain rights in your mark.

Secondly, there is an often misunderstood, and usually unknown, concept in law known as the laches doctrine. The laches doctrine acts as a stopwatch: take too long to prosecute and you may lose the right to do so. For example, if someone infringes on your trademark today, you cannot decide to sue them 50 years from now for that infringement. The laches doctrine uses a reasonableness standard when determining how long is too long. While a year might be a reasonable amount of time to defend your trademark, 5 years might be too long. It depends on the court, the circumstances that kept you from filing suit, and the reasonableness of the situation.

In the end, it’s important to regularly check if anyone is infringing on your trademark. Fortunately, it’s a rather easy task to complete. Remember, Google is your friend! Put a few minutes aside each month and do a Google search on your trademark. Use the “Tools” feature to change the results from “Any Time” to the “Past Year”. Go seven or eight pages deep, and if you’ve still found nothing, you’re likely in the clear.

If you do find someone infringing on your mark, give me a call, or speak to another qualified IP attorney to learn what you need to do to protect yourself and your brand.

Michael K. Terkanian, Esquire.

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