A recent survey of global companies found that trademark infringement is on the rise.   The survey was conducted by Compumark, a leader in trademark research and brand protection solutions.   Despite the fact that 80 percent of the executives polled believe that trademark infringement is a growing problem, only fifty percent admitted to having comprehensive trademark watch services in place.

Highlights of the survey include the following:

  • 53 percent of respondents reported taking trademark enforcement actions against third-parties
  • 34 percent of respondents indicated that their company had to change a name due to possible trademark infringement issues
  • Numerous problems have arisen from trademark infringement, including loss of revenue (26 percent) and damage to brand reputation (21 percent)

Trademark Infringement Monitoring

Trademark enforcement strategies begin with best practices.  Brand owners and inhouse trademark counsel are advised to incorporate some or all of these tactics into their brand enforcement programs.

Trademark watch.   A trademark watch service is a great investment that monitors the USPTO and other national trademark registrars for confusingly similar applications.

Marketplace monitoring.    Companies such as Net Names offer brand owners comprehensive brand monitoring tools to notify brand owners when counterfeiters or unauthorized sellers are using a company’s trademarks without permission.

Trademark Opposition.  When a third-party applies for an application that is confusingly similar to a company’s brand name, a trademark opposition or cancellation proceeding may be instituted.

Rapid enforcement.    Agile enforcement mechanisms such as cease and desist letters, and Amazon or Google takedown notices, can be cost-effective means to stop the unauthorized use of trademarks without the need of filing a trademark infringement lawsuit.

Companies with effective trademark enforcement programs have well-developed plans in place, and constantly review them to ensure that the company’s business priorities are aligned with its brand enforcement budgets and goals.

Tags: "trademark infringement", Collen IP, James Hastings, trademark enforcement, trademark monitoring
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James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is…

James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is the publisher of Trademark Opposition Lawyer, an online advisory dedicated to helping brand owners understand important issues that arise in proceedings before the U.S. Trademark Trial and Appeal Board.  His commentary has been featured on Corporate Counsel, Law.com, LegalZoom,and other digital publications.

He devotes his practice to trademark opposition and trademark cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.  Over the course of his career, he has represented the interests of numerous national and international brand owners in trademark litigation matters in both the U.S. District Courts and before the U.S. Patent and Trademark Office.

Prior to his current affiliation with Practus, LLP, James was in-house counsel to a New England-based catalog retailer, where he was responsible for developing trademark portfolio acquisition, protection, and licensing strategies.  Earlier in his career, he was a partner and associate at intellectual property law firms in New York, where he was engaged in trademark portfolio and intellectual property protection work on behalf of well-known fashion and personal care brands.

James is a member of the New York and Connecticut bars.  He has lectured at University MBA programs and legal education conferences on the issues of trademark protection and e-commerce law.

Past and Present Membership

  • International Trademark Association
  • Association Corporate Counsel

  • National E-tailing and Mail Order Organization of America

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