How Can a Trademark Attorney Enforce Rights Against Infringement Without Litigation?


    How Can a Trademark Attorney Enforce Rights Against Infringement Without Litigation?

    When it comes to upholding trademark rights, the expertise of seasoned Principals and Intellectual Property Attorneys shines through with strategies that avoid the courtroom. From asserting rights with cease-and-desist letters to employing alternative dispute resolution methods, these professionals lay out a path to protect intellectual property. Alongside these expert opinions, we also explore additional answers, such as monitoring trademarks with watching services, to give a full spectrum of non-litigious enforcement tactics.

    • Assert Rights with Cease-and-Desist Letters
    • Utilize U.S. Customs and Online Takedowns
    • Employ Cease-and-Desist for Dispute Resolution
    • Leverage Online Marketplace Protection Programs
    • Negotiate Licenses or Coexistence Agreements
    • Send Formal Infringement Warning Letters
    • Resolve Conflicts with Alternative Dispute Resolution
    • Monitor Trademarks with Watching Services

    Assert Rights with Cease-and-Desist Letters

    Trademark rights are enforced by asserting them, for example, in a cease-and-desist letter. While registration is not needed to enforce trademark rights, it is valuable to have, as an adversary will appreciate the registration as evidence of the asserting party’s rights in a trademark. Thus, being able to claim that you have a registered trademark supports your claim in a cease-and-desist letter.

    The stronger you can make that letter, the more effective it will be in avoiding litigation. How do you make a letter strong? For one, it should be drafted to emphasize the strength of your case and not be boilerplate. A good trademark attorney can tell the difference and will appreciate the seriousness of your client’s claim based on the tone of your letter, as well as the care that was taken in drafting it and the details provided. A good letter shows that the attorney sending the letter has thought through the factors that are necessary to show that there would be infringement and, by communicating those issues in the letter, effectively avoids litigation because the attorney on the other side sees how the case will be presented to a court and appreciates if his or her client would be liable for infringement if the matter is not resolved at this letter-writing stage. So yes, this is done all the time by trademark attorneys, as only a small percentage of matters actually go to litigation. Litigation is very costly, and a client is best served by attempting to resolve the matter from the get-go by presenting your case in such a letter to the adversary, and hoping that the attorney the adversary hires has the good sense to appreciate the weakness of their client’s case and the integrity to properly advise their client that their case is weak and its conduct could result in a finding of infringement if litigation is pursued.

    Maria SavioPrincipal, Gottlieb Rackman & Reisman

    Utilize U.S. Customs and Online Takedowns

    I frequently help clients enforce their trademark rights without resorting to litigation.

    One way to do this is to work with U.S. Customs and Border Protection ("CBP"). If a U.S. trademark registration is recorded with CBP, they will monitor goods imported into the country for infringements. If CBP finds infringing goods, they will seize them. Several years ago, CBP found two shipments of labels bearing my client's mark that were destined for the same address in the U.S. We investigated the matter, and eventually, law enforcement conducted a raid at that address after determining that counterfeiting was occurring.

    Another way to enforce trademark rights without litigation is to take advantage of the takedown mechanisms offered by most online platforms, such as Amazon, Google, YouTube, and others. A complaint that complies with the platform's requirements (each platform can have its specific requirements) can be very effective in removing infringing products or content. It can also be faster than litigation. When I have submitted such complaints on behalf of clients, the material at issue has generally been removed in a matter of days.

    A notice letter is another effective way to enforce trademark rights without litigation. I have worked on matters where the recipient of the letter has agreed to stop their conduct upon receipt of the letter.

    While effectively enforcing trademark rights without litigation is possible, litigation is sometimes necessary. Why would litigation be necessary? Occasionally, an infringer will not stop without a court order. In most trademark enforcement litigation that I have been involved in, litigation has been the last resort after other enforcement mechanisms have not achieved the desired result. In other cases, litigating is necessary to create a reputation for enforcing one's rights. If third parties know that you enforce your rights, they may be less inclined to infringe.

    If someone seeks to enforce their trademark rights, they should speak with experienced trademark counsel about their options and develop an enforcement plan. It is important to speak with experienced counsel to fully understand the pros and cons of each type of enforcement mechanism. It might be possible to recover monetary damages in litigation, but is the goal to recover money or to stop the infringing conduct? Speaking with experienced counsel can help one focus on what they seek to achieve and what can be achieved.

    Marc Misthal
    Marc MisthalPrincipal, Offit Kurman, P.A.

    Employ Cease-and-Desist for Dispute Resolution

    A cease-and-desist letter is the most tried-and-true method of enforcing trademark rights without resorting to litigation. A well-written C&D letter puts an alleged infringer on notice of a trademark owner's rights, lays out facts related to a particular alleged infringement, and (ideally) opens the lines of communication between the alleged infringer and the trademark owner. A C&D letter can also help the trademark owner evaluate whether or not the alleged infringer will engage in the dispute resolution process. If the alleged infringer does not engage (read: respond), the letter can further the trademark owner's willfulness case should the dispute end up in litigation, especially if a default judgment ends up being entered against the infringer.

    Ryan Cudnik
    Ryan CudnikIntellectual Property Attorney, Grover Gaming, Inc.

    Leverage Online Marketplace Protection Programs

    A trademark attorney may protect a client's intellectual property by using online marketplace programs specially designed to prevent the sale of counterfeit goods. These platforms have protocols in place that facilitate the reporting and removal of listings that infringe upon registered trademarks. By monitoring these marketplaces regularly, attorneys can quickly identify and address any unauthorized use of a client's trademark.

    This proactive approach often prevents the need for costly and time-consuming court cases. If you're facing infringement issues, consider leveraging these online resources to defend your brand's integrity.

    Negotiate Licenses or Coexistence Agreements

    When facing potential trademark infringement, attorneys might explore the avenue of negotiating licenses or coexistence agreements with the infringing party. This solution creates a legal path for the continued use of the mark under mutually agreed upon terms, potentially turning a competitor into a partner. Such agreements can often satisfy both parties' interests and provide a steady revenue stream through licensing fees.

    This win-win scenario avoids the hostility and high costs associated with legal battles. If you're dealing with infringement, seek to negotiate agreements that can benefit both your business and the party in question.

    Send Formal Infringement Warning Letters

    Trademark attorneys can send formal infringement warning letters as a first step to address unauthorized use of a mark. These letters serve as an official notice to the infringer that their actions have not gone unnoticed and legal rights are being actively enforced. In many cases, this can prompt the infringing party to cease their activities without the need for litigation.

    The letter should be clear, firm, and outline all the legal remedies available if the infringement continues. If you suspect someone of infringing on your trademark rights, contact a legal professional to draft a stern warning to the offending party.

    Resolve Conflicts with Alternative Dispute Resolution

    Resorting to alternative dispute resolution methods, such as mediation or arbitration, can be an effective way for trademark attorneys to resolve conflicts without litigation. These processes are usually less formal, quicker, and more cost-effective than traditional court proceedings. A neutral third party helps the disputing sides to find a fair and mutually acceptable solution.

    This method is often beneficial for preserving business relationships while still protecting trademark rights. If you face a trademark dispute, consider alternative dispute resolution to achieve a satisfactory outcome without stepping into a courtroom.

    Monitor Trademarks with Watching Services

    Engaging in strategic trademark watching services is another enforcement strategy that allows attorneys to monitor the use of trademarks worldwide. This vigilance can detect any potential infringement early on, which can then be addressed before it escalates into a larger issue. By being informed of possible violations as they occur, legal action can be taken quickly to stop the unauthorized use and prevent further damage.

    Trademark watching services are a critical defensive tool in the protection of intellectual property rights. Keep your trademarks secure by enlisting a service to watch over them continuously.