Sometimes, when you are just starting out, it doesn’t make sense to attack all trademark issues like the University of Alabama does. It is, however, still important to have a plan in place. Your plan needs to include two primary objectives:
1. Monitoring your trademark
2. Protecting your trademark
You can be as specific as you want to be with your plan, but you need to make sure you have those two objectives covered. If you want to listen to this discussion, check out the podcast episode on trademark monitoring.
Monitoring Your Trademark
There are many companies that will happily take your money to monitor your trademarks. There are many different ways to monitor your mark, but, when you are just starting out, you can keep it simple. AND inexpensive.
Set up a Google alert on your mark. We talked a little bit about this a couple of weeks ago in the conversation on Dilution of your mark. Don’t simply stop at setting up a Google alert only for your mark, get creative with the various ways people may use your mark or a play on your mark. Make sure to research how to create strong searches with Google to make sure your searches (once automated) are returning the most relevant results. You may also want to simply keep tabs on your industry and set up searches there to see if anything pops up that you didn’t consider.
This is the minimum you should consider doing for your mark. Just make sure you revisit the search. If you come up with a way to search for your mark that isn’t a part of your regular search, stop what you are doing and create one. You work to automate your business and build processes to make it work for you. Protect your business the same way.
Now, when you get a hit on a search, you need to have a plan for Protecting Your Mark.
Protecting Your Trademark
At a bare minimum, you should have a template Cease and Desist letter (like we talked about last week) ready to fire off. You may want to create a series that escalate in their seriousness. The real question you need to consider is, how serious is the infringement? How serious a threat do you think the infringing mark is going to b? Is the infringement clear cut making it necessary to file a lawsuit? or would it be a battle over whether or not it was yours?
The main thing when dealing with protection of your mark is you need to implement your process for every potential infringement. You can make a judgment call on how far through the process you go in each instance, but you need some kind of documented evidence that you were protecting your mark. One of the main reasons for this is because, if you ever do file a suit to protect your mark, the one infringing on your mark will search for every other potential infringement that has ever occurred with your mark and try to prove that you do not value your mark because you do not protect it. They will then argue that you are simply bullying them by filing suit against you but no one else and they should be allowed to continue using the mark.
No one wants that.
So, monitor your mark. Create a series of cease and desist letters that escalate. Decide how many it should be before you actually turn it over to your lawyer. If you have a lawyer you work with on a regular basis, work with them on the process. Have them help you craft the letters you will send and talk with you through their process if you do have to turn it over to them.
So, create that process.
Hopefully, you will never need it.