Infringement Monitoring: Protecting Your Brand from Predators

Many companies are in such a hurry to get to market with their company launch or latest new product that they overlook a very critical step. Protecting the intellectual property (IP) of the company and enforcing the use of it.  Experts agree that if you don’t protect your IP it can fall prey to those who capitalize on all your hard work and investment. In addition, the courts may not support legal action if you delay in a response to someone using your IP.

The first step in enforcing your brand is to actively conduct searches for potential infringement of your mark.  The common searches include federal and state trademark registrations, domain name registrations and common law uses (Corporate Filings/Fictitious Business Names/DBA’s) of your mark(s).  Many use a commercial search provider like CT Corsearch or Thomson Compumark to handle these types of monitoring services.

How Can We Tell if We Have an Infringement Problem?

Often times, companies are tipped off about infringers or unauthorized resellers by their sales representatives, authorized distributors and/or Google alert-type notifications.

Once potential infringers are uncovered, a business owner will often contact their IP Counsel and discuss the situation.  Your attorney will likely conduct some sort of an investigation prior to preparing and sending a Cease & Desist letter.  Counsel will need to take diligent steps to verify that the product being sold by the alleged infringer is in fact counterfeit or grey market.

The best way to verify the infringement is to engage an investigation firm with experience in IP cases. Specifically, you want to work an experienced firm with front companies used  to make purchases discreetly at the wholesale or retail level.  This will also aid counsel in understanding where the counterfeiter is located and provide additional information (phone, fax, email, products, date of first use, sales, scope, distribution warehouses, etc.).

Avoid Pre-Date Landmines

Attorneys will also need to verify that their client’s use in commerce pre-dates the alleged infringer. In other words, don’t poke the bear until you have well-documented, stand-up-in-court evidence that you were the first to market.

One of the worst things that can happen is that an infringer receives a Cease & Desist letter from a major brand or large company which triggers them to pursue or counter-sue. The major brand or large company may be on the losing side of the argument on the basis that alleged infringer’s use pre-dates the use of the notifying party.

Diligence Pays Off in the End

If infringements are dealt with quickly and effectively a brand owner can restore faith with their resellers, distributors, consumers and brand representatives.  Additionally, infringers that are approached and treated seriously are less likely to continue to infringe on those brands that are enforcing their IP rights.

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