Establishing a strong brand is critical to a business’ success. Selecting, and securing rights in, a trademark(s) is typically essential to successful branding. It cannot be said often enough that, in the trademark space, “an ounce of prevention is worth a pound of cure.” It is extremely important to conduct your due diligence and check the availability of your mark before expending resources adopting the mark and building a branding campaign around the mark. Retaining an experienced trademark lawyer will help ensure that these steps are competently undertaken.
Vigilant protection of your trademark rights is essential to maintaining those rights. On the other hand, “trademark bullying” is a real problem. Not infrequently, trademark owners launch campaigns challenging dozens of pending trademark applications through opposition proceedings. Opposition proceedings are adversarial proceedings before the Trademark Trial and Appeal Board (a department of the U.S. Patent and Trademark Office, a federal government administrative agency) where parties argue that a particular trademark application should not be allowed because use of the mark would be likely to cause consumer confusion as between two marks. Sometimes, however, even a cursory comparison of the challenged mark with the asserted mark will quickly reveal that the challenge is baseless. Dealing with such overzealous, vexatious, campaigns (which are sometimes referred to as “trademark bullying”) require customized strategies that preserve the applicant’s rights while at the same time avoiding protracted litigation and the attendant costs. (Cancellation proceedings are very similar to opposition proceedings but involve a challenge to an already-registered trademark instead of a pending trademark application.)
Further, these trademark enforcement campaigns often times evolve to include litigation in the courts as well. This is because trademark applicants and registrants are often using their marks in commerce at the time the opposition/cancellation proceeding is pending. The same “likelihood of consumer confusion” standard applicable in an opposition or cancellation proceeding likewise governs a trademark infringement analysis in litigation in the courts. And litigation offers the plaintiff much broader forms of relief than are available through an opposition or cancellation proceeding. The only remedy available in an opposition or cancellation proceeding is rejection of the trademark application or cancellation of the registration. In the courts, the complaining party may potentially obtain monetary damages and a court order prohibiting further infringement. The potential for the dispute to morph into a trademark infringement litigation in the courts is all the more reason why it is in the client’s best interests to retain a trademark lawyer who is experienced litigating trademark disputes in the courts as well as before the Trademark Trial and Appeal Board.
Chiacchio IP routinely handles both opposition and cancellation proceedings before the Trademark Trial and Appeal Board as well as trademark infringement litigation in the courts. In fact, Chiacchio IP Founder and Owner Ted Chiacchio recently successfully secured a settlement in a trademark dispute involving parallel opposition proceedings and federal district court litigation, in this instance on behalf of the trademark owner/plaintiff, requiring that the defendant/infringer withdraw its trademark application and abandon all use of the infringing mark. While Ted is an experienced trial attorney, he understands that, where he is able to obtain the result that his client desires without having to take the case through trial, this is, other things being equal, preferable. In this connection, Ted is very experienced preparing, and responding to, cease-and-desist letters pertaining to trademark matters. In short, Ted leverages his deep experience as a well-rounded trademark lawyer to obtain the most favorable outcome for his client, whether that means taking a case through trial, or reaching an expeditious settlement thereby quickly allowing the client to avoid the distraction and potential cost of protracted litigation. If you or your business are grappling with any trademark issue, Chiacchio IP would welcome the opportunity to discuss the matter with you. Chiacchio IP does not charge for initial consultations.