A trademark can be a business’s most valuable resource. Trademarks are used to associate a business with a particular good or service. It is part of developing a brand. However, many people do not know that you can lose your trademark if you are not careful. So, you have established a business, chosen a trademark, and even registered that trademark. Now that you’ve done all that, what else is there to do?
What is the Duty to Police and Why Do I Have to Follow It?
In short, the duty to police is a duty to enforce your own property rights. As you should know, by owning a trademark, you have a right to stop others from using your trademark without permission. The duty to police is, in large part, keeping an eye out for those who may infringe on your trademark. However, before going into how you can police, it’s good to know why it is you have this duty.
In America, everyone knows that you have the right to own property. Owning property comes with a “bundle” of rights. For instance, you have the right to buy property, to use it, to give it away, or to sell it. Essentially, once a piece of property is yours, you can do almost anything you want to with it. However, what many people do not realize, is that even those rights have limits. There are two limits in-particular that may result in you losing your right to own property.
The first limit, which you probably could have guessed, is if you use your property to hurt others. If you buy loud outdoor speakers and blast music in your yard 24 hours a day, your neighbors may not like that. If you continue to do this, you may eventually have your speakers taken away. So, the first limit can be summarized as follows: you may use your property in any way you like, so long as how you use it does not cause harm to others.
The second limit is not as simple and does not apply to all kinds of property the same. This limit applies when you abandon your property. Now, at this point, you are probably thinking, “well that makes sense. If I abandon my property somewhere, it’s probably because I don’t want it.” Well, in some cases, you would be right! If I intentionally leave a baseball card on a restaurant table when I’m done eating, I have abandoned that baseball card and whoever finds it can be the new owner. Unfortunately, for trademarks, the word “abandonment” can mean a bit more than that.
In the trademark context, abandonment can also mean “acquiescence.” Acquiescence is a word that means you have allowed something to happen. So, by intentionally leaving my baseball card on the restaurant table, I have acquiesced to the waiter picking it up and keeping it. For trademarks you may acquiesce, or allow, someone to use your trademark if you do not follow your duty to police. If you allow your trademark to be used like this for too long, you may abandon it. This is why it is so important to police your trademark.
Let’s try one more example just to make sure we fully understand the seriousness of abandonment. Say you have a registered trademark for your business. You are using your trademark but not policing it. Three towns over, another company, similar to your own, begins doing business and uses your trademark without seeking your permission. Because you didn’t police, you weren’t aware of this infringement and the other company continued to do business for three years. Because you did not do anything about the other company’s use for so long, there is a chance that you will not be able to do anything about it now that you do know. You may have abandoned your trademark.
In the above example, if you had been properly policing your trademark, you may have found out about the infringing company sooner and could have put a stop to their use of your trademark. In the end, this would have prevented you from abandoning your trademark and likely would have helped your business, too.
So, how do I Police my Trademark?
The important thing to remember with policing is that the law will not expect you to do anything unreasonable. It could take a lot of time and money for you to be constantly looking for possible infringers and addressing each of them. Because of this, we suggest two simple tasks that can help you protect your trademark.
First, a simple internet search goes a long way. By periodically searching your own trademark on the internet, you can often discover if other companies or individuals have tried to use your trademark without your permission. It is not uncommon that a new company will choose a name that the owner of the company does not know is trademarked. In that case, if you find the company is using your trademark, it may be as simple as contacting the owners and asking them to stop. In other cases, someone may think that their use of your trademark is perfectly fine and so they do it intentionally. In either case, by doing an internet search, you could discover the potential infringer and take the right next steps to protect your trademark.
Second, you can do a search on the United States Patent and Trademark Office (USPTO) website. The USPTO website has a search tool that allows you to search for all registered trademarks that exist in the United States. If you have a registered trademark, you should be somewhat familiar with this tool. The search tool can sometimes be difficult to navigate, however, by even doing a simple search on the website, you could see if any new people have tried to register a trademark that is the same or similar to yours. By doing this, you will be policing your trademark with the goal of protecting your own property.
Of course, there are more ways that you can police your trademark. There are even entire companies devoted to policing for you. However, these are two easy ways for you to do some policing for yourself.
What if I find a Possible Infringer?
If you find someone using your trademark without your permission, there is a chance that the person is infringing. At that point, the best course of action would be to contact your attorney for help. Of course, a very common first step is to send what is called a “cease and desist letter.” This letter is a way to notify the possible infringer that you will not allow them to use your trademark without permission. Your attorney can help you draft a cease and desist letter that you can use every time you find someone using your trademark.
Trademarks are very valuable pieces of property. The law expects trademark owners to protect their property by policing. Policing doesn’t have to be anything impossible or extremely difficult, but it is important to do.
If you have more questions concerning policing, or have any other intellectual property related needs, you should speak to an attorney. Partners, Rachel Brenke and Andrew Connors have become intimately knowledgeable with intellectual property laws, including trademark registration and litigation. The firm has become highly-sought after for their expertise and knowledge in this very intense area of the law. If you are concerned about receiving a cease and desist letter, don’t hesitate to contact Connors and Brenke to help you through your next steps. While we are Virginia-based trademark lawyers, we have offices around Virginia and work in many states through partnerships with other attorneys.
Written by third-year practicing intern John Riordan under Connors & Brenke.
