Tag Archives: USPTO

The Importance of Policing Your Trademark

Building a brand is difficult, especially one that sets you apart from your competitors and instills confidence and association with your product from consumers. But building a brand isn’t the end, it is only the beginning. Maintaining and policing your mark is just as important, if not more important. Once your brand starts accumulating client goodwill, competitors and knockoffs will invariably want to “steal” some of that goodwill for themselves. These competitors will seek to confuse your clients and potential clients – using the goodwill you have worked so hard to build up for their own gain.

Taking steps to police your brand and the marks associated with it requires affirmative actions to seek out these copycats and to then stop them. Not only is this a good business practice, it is legally required if you wish to keep the legal rights to your mark.

The courts have held that a “trademark owner has an affirmative duty to police his trademark.” Wisconsin Cheese Group, Inc. v. V & V Supremo Foods, Inc., 537 F. Supp. 2d 994, 1001 (W.D. Wis. 2008). If a trademark owner allows an infringing mark to continue in commerce for too long, the owner may lose any rights to prevent the continued infringement in the future. Id.

Importantly, courts have held that trademark owners cannot just hide theirs heads in the sand and be willfully ignorant of potential infringing uses. Trademark owners must affirmatively take actions to seek out infringing uses and take affirmative steps to prevent them. See Wisconsin Cheese Group, supra (“lack of actual knowledge of infringement does not automatically excuse a trademark owner from unreasonable delay”) and Chattanoga Mfg., Inc. v. Nike, Inc., 301 F.3d 789, 793 (7th Cir. 2002) (“a trademark owner is ‘chargeable with information it might have received had due inquiry been made.’”).

Because of this, if you have a trademark or servicemark that you wish to keep, you need to take affirmative steps to ensure that no one else is infringing on it. Otherwise, all your hard work and customer goodwill may have been for nothing.

What Steps Can Trademark Owners Take to Protect Their Marks?

One of the most important things a mark owner can do is to be knowledgeable of their industry and the players in that industry. To do this a trademark owner should:

  • Know who your competitors are and who the new entries into the market are (industry groups and trade associations are great for helping with this);
  • Perform internet searches for your mark to know who is using it and in what context; and
  • Importantly, know who is filing federal registrations with marks that are confusingly similar to your mark.

For the last entry, it involves periodically checking the United States Patent and Trademark Office’s (“USPTO”) trademark database to see the new filings and what goods or services they identify and, from there, determining if any new filings have a likelihood of consumer confusion with your mark.

How Can Smith & Associates Help You?

While anyone can search the USPTO’s trademark database, understanding their impact is a whole other issue. In fact, there are numerous companies that will search the USPTO database for you and send you their results periodically each year. Unfortunately, a listing of registration results does not help a trademark owner know if this is something that requires action.

This is where we can help. Smith & Associates offers very affordable, flat-fee pricing to monitor your marks against the USPTO database. Our service doesn’t just give you a listing of search results, it gives you actionable advice based on the search so that you will know a) if anyone is potentially infringing on your mark and b) what actions you should take to prevent this moving forward. More importantly, if you have questions about the results, you will have an experienced trademark attorney to discuss your results and your options.

If you would like to have us monitor your marks against the USPTO database, contact an experienced attorney at Smith & Associates for a free consultation to discuss your options.

Claim Preclusion and the TTAB

Today, the Supreme Court handed down its decision in B&B Hardware, Inc. v. Hargis Industries, Inc.. This decision has a real impact on companies that are applying for and challenging federal trademark registrations. While the full history and details of this case have been going on for almost two decades and, according to the Court, “could fill a long, unhappy book,” the important facts are fairly straight forward. In 1993 B&B registered its trademark “SEALTIGHT” for “threaded or unthreaded metal fasteners and other related hardwar[e]; namely, self-sealing nuts, bolts, screws, rivets and washers, all having a captive o-ring, for use in the aerospace industry.” In 1996, Hargis sought to register its trademark “SEALTITE” for “self-piercing and self-drilling metal screws for use in the manufacture of metal and post-frame buildings.” Eventually in 2002, The United States Patent and Trademark Office (“USPTO”) published Hargis’s mark for opposition and B&B filed an opposition which prompted a proceeding before the Trademark Trial and Appeal Board (“TTAB”). However, B&B had also filed a trademark infringement action in the circuit court.

This is where the issue before the Court comes in. B&B was arguing before both the circuit court and the TTAB that Hargis’s mark was so similar to its mark that it would create a likelihood of consumer confusion. Before the circuit court could rule on this matter, the TTAB agreed with B&B and ruled that the marks were so similar as to cause a likelihood of consumer confusion and refused to register Hargis’s mark. Hargis did not appeal the TTAB decision. B&B then argued in front of the circuit court that since the TTAB has already ruled on likelihood of confusion, that decision should apply to the circuit court and that Hargis should not be able to raise the defense that there is no likelihood of confusion. This is called claim preclusion, when once Court rules on an issue, other Courts are bound by that ruling. Today’s Supreme Court decision confirms that B&B is correct and that TTAB rulings would prevent those same issue from being argued in circuit court.

Hargis’s decision not to appeal the TTAB ruling, in effect, bound it to the ruling for any subsequent lawsuits. This is important. Proceedings before the USPTO can have a preclusionary effect. Hargis, by not appealing the TTAB decision, is now precluded from arguing one of its main defenses.

This ruling enforces that issues before the USPTO are serious matters that should not be taken lightly. If you have a trademark issue, contact the professionals at Smith & Associates for a free consultation.