MAKING LEMONADE: HOW TO MANAGE A CLAIM AGAINST YOUR MARK
When most clients reach out to me with a claim against their mark, be it a Cease & Desist letter or a nastygram from the opposing counsel, their first reaction is quite negative. They may feel hurt, fearful, offended or even angry that someone has accused them of attempting an illegal act.
As a professional attorney who has been practicing intellectual property law for many years, my reaction is quite different. When I see that a client's mark has received attention from another company or attorney, I first recognize that my client’s business must be doing something right to be noticed! After all, if your brand or mark was no threat, no one would spend the time or effort to contact you. I start by helping my clients recognize that, because the attitude we take when facing these challenges is all the difference in getting through them quickly and more easily. With this slight attitude adjustment, together we face the challenge of investigating the claims and determining their validity. As legal claims, these accusations must hold up in the court of law and follow the rules of the PTO. This means that the offended party, after sending a Cease & Desist letter, must be ready to move forward with a claim, and have supporting evidence for their position, or else they may be open to a counterclaim, or worse. My clients and I work closely together to evaluate these situations together early on, to ensure that any next steps taken are both reasonable and justified.
In some cases, the prosecuting party will not have a valid case, and we may be looking at a trademark bully, who just wants to make a name for themselves or a troll, looking to cash in quickly against a company they think won’t fight back. When these situations occur, I’m able to work with the client to resolve the situation and protect their interests, or negotiate a proper settlement between the parties to resolve it efficiently. For those cases that do have merit, having me on their side from the outset can help to mitigate the situation and resolve it faster.
When The Shoe Is On The Other Foot
Sometimes, when we are monitoring marks for conflict, we are the ones presenting a claim for an infringing mark, image or other materials. Again, as tough as this is to swallow, I remind my clients that if they didn’t have something valuable to protect, this action would not be needed. So while imitation is the sincerest form of flattery, it’s still one that is important to squash when it comes to enforcing your rights.
Just as with claims made against my client, any claims we assert against an offender must hold up to the legal standard set by the PTO and courts. Resolution can take many forms, from financial compensation to changes in brand activity, but no claims should be made until the situation is clearly investigated and the evidence to support your position is established. As the filing attorney, it’s my job to ensure that my clients cannot be brought forth on charges of frivolous litigation, or be subject to a valid counterclaim.
You Have A Claim…Now What?
Whether you are receiving a claim against you, or looking to file one, it’s important you engage an attorney to assist you. Understand, once an attorney gets involved, things can escalate very quickly. Your attorney should help you understand the risk and costs you are likely to face. Just sending a cease and desist letter, or shutting down a social media site can open Pandora’s box. You need to be ready to face what’s on the other side.
If you receive a claim, or believe you have a claim against a third party, consult with an experienced trademark or copyright attorney before proceeding. If you are concerned about third party use of a design associated with your business, contact an experienced trademark and copyright attorney to discuss the most effective way to protect your intellectual property.
We have more than 20 years of experience in intellectual property law and enforcement of trademark and copyright rights.
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