Tips from the Trademark Insider: Beware of the Perils of Self-Enforcement

In our business we are often presented with situations where we are brought in to clean up someone else’s proverbial mess. One of the most frequent messes is caused by the perils of self-enforcement of trademark rights.

Did you know that, as a general rule, everything you say to another individual or company attempting to enforce your rights can be used against you if what you say, in the end, actually hurts your case rather than helps it?

Let’s say that you think someone is infringing on your mark. You send them an email demanding they stop. The only problem – they were using the mark before you were. Congratulations, you have just admitted that you believe the marks are likely to cause confusion with one another, a fact that is sure to come up in trial when the other party sues YOU for infringement of the mark they were using first!

Of note, well-crafted letters from attorneys are generally protected by Federal Rule of Evidence 408 which precludes “settlement discussions” from being used against their clients in a court of law. Moreover, skilled practitioners always conduct due diligence to make sure that their clients are in the right before sending the demand letter in the first place.

Of course balanced against this risk is the cost of enforcement that often can be a significant expense. So how do you cost-effectively Enforce Your Trademark Rights? Many firms now have affordable Standard Enforcement Packages which can enforce your rights for a fraction of the cost of traditional Litigation.

Of course Litigation is often required. But in our experience true infringers often run upon the mere notice that you intend to enforce your rights. But in your zeal to protect your mark always keep in mind the age-old admonition of law: He who represents himself has a fool for a client.

The Trademark Company