Policing your brand and a recent Trademark Trial and Appeal Board result

Some of our clients and potential clients ask why they should "police" their trademark. Well, to keep a trademark, and not abandon it, you simply have to. A recent success at policing our clients' marks provides a great example of the process.

Why police a brand in the first place

There is a trade off between the trademark owner and society. The trademark owner gets a limited monopoly over a word. In exchange, that trademark ensures that when society sees that mark, it knows exactly what it is getting. It does so by being the sole source of goods under that mark.

If a trademark owner does not police its mark, other might use it to sell similar goods. Thus, society could think it is getting a shoe from NIKE, but it actually comes from a no-name shoe company that just stamped NIKE on it. Society suffers because it got duped. In this situation, if Nike does not try to prevent others from ripping off its brand, society suffers, and Nike could be deemed to have abandoned its mark. If abandoned, others can rightfully use it.

We can police your brand for you

One of our clients makes use of our trademark policing service. We review others' applications at the United States Patent and Trademark Office. Another company filed for a similar trademark for similar goods and services. So, we were alerted and we alerted the client. What did we do?

First, we sent a gentle cease and desist, hoping that the offending party would simply drop its application and find a different name to do business under. It did not. Accordingly, we filed opposition proceedings at the Trademark Trial and Appeal Board.

Our efforts at the Trademark Trial and Appeal Board

The Trademark Trial and Appeal Board is the appellate body for trademark matters at the United States Patent and Trademark Office. Accordingly, we filed an opposition to the registration of the mark. 

This restarted settlement discussions. The company applying to use our client's brand decided to change its name. It withdrew its application for a trademark registration and we are dismissing the TTAB proceedings. Now there will be no confusion for society, our client policed its mark - strengthening its brand, and our client has ensured its unique name will always identify it as the source of its services. Moreover, we did not have to file a lawsuit for trademark infringement, either. A solid result for our client, and we would argue, for society.