The Cost of Self-Enforcement of Your Trademark Rights: Self-Enforcers Beware

Unfortunately we have had yet another reminder of why trademark holders should seek assistance when seeking to enforce or defend their trademark rights.

Of course we have changed the facts and circumstances slightly to avoid any ethical issues. In one such case we recently handled our client initially attempted to enforce their mark against another they thought was infringing upon their trademark. They sent letters explaining that the other’s mark was confusingly similar to their mark because of the various reasons they listed. They had voluminous correspondence with the other party showing how many instances of actual confusion there was among actual consumers of their respective goods and services.

Everything looked great. But for some reason the other side refused to give in.

The case came into our office and within a few minutes we realized why. Although our client had all of this evidence and had prepared their arguments beautifully they had overlooked one critical fact: the other party had started using their trademark before our client had begun use or acquired rights in theirs. As such, our client had, in essence, been doing a brilliant job of proving the other party’s case for them all the while thinking that they had superior rights and not understanding why the other side would not give in.

Now our client is busy preparing to select and adopt a new trademark all the while hoping that the other side does not decide to sue them for infringement.

Sometimes even our best intentions can be misplaced. No matter if you are just starting out or are a world-class entrepreneur if you are not an expert in trademark law do not make the same mistake our client did. Get someone on board early on who knows what they are doing.

If the other side is infringing on your trademark proper counsel can streamline the process. If after conducting due diligence in the matter it turns out the other party may have superior rights trademark counsel can craft a defensive plan and even an exit strategy, if needed, so as to minimize any losses you may incur from either continuing to use your trademark or moving away from the same.

The Trademark Company