Beware of the Perils of Self-Enforcement of Your Trademarks

Today we were speaking to a prospective client about a potential trademark dispute and were reminded of the perils of self-enforcement of one’s trademark. Fortunately for our prospective client they were the beneficiary of another’s misguided enforcement efforts. However, it could just as easily went the other way. So here is a little primer on the dangers of self-enforcement.

Even if well-intentioned, direct communications to a purported infringer can often be damaging to a trademark holder’s rights. Let’s assume you discover another using a very similar mark to yours. Perhaps one of your client’s calls you and says they were confused by the other party’s existence. Who knows? No matter how you find out you decide to fire off a letter to the bad guy demanding the stop using your mark. Feeling empowered you send the letter.
The letter demands that the bad guy stop using his mark because you have been using your since, let’s say 2007. You receive a very short response to your letter saying “Thanks for your concern. But we’ve been using our mark since 2002. Stop using yours or pay us big $$$$$$.” As you sit back in your chair you get that sick feeling in your stomach when you know something bad has just happened – and it is only the tip of the iceberg.

And so illustrates the perils of self-enforcement. What could or should have been done better?

No. 1: Due Diligence. You can do it yourself or a lawyer can do it for you. Anytime you think about enforcing your mark, you MUST make sure you have priority of use. NEVER ASSUME.

No. 2: Your Statements are Admissions. Properly crafted, an attorney’s statements are not. As such, anything you say – assume it will be blown up and Exhibit 1 at the trademark infringement case against you. A skilled lawyer, not a chance.

No. 3: FRE 408. Federal Rule of Evidence 408 precludes the admission of evidence in the course and scope of settlement discussions. Placing the term “FRE 408 Applies” at the top of any letter to the infringer may preclude the letter’s admission in a subsequent enforcement action.

So if you can avoid it, don’t self-enforce. If you must, conduct your due diligence first and make sure you ad “FRE 408 Applies” at the top of any letter to the infringer.

TheTrademarkCompany.com