Trademark enforcement rights and responsibilities

Glenn W. Peterson

Many people, including business owners, in California may believe that once they are granted a trademark or a service mark that they never need to worry about the future validity of that trademark. In reality, however, that is not true. There are a few reasons for this, one of which is the fact that other entities may actually infringe on an existing trademark either knowingly or unknowingly. Another thing people must know and that Forbes points out is that the responsibility for enforcing a trademark lies solely with the trademark owner.

The U.S. Patent ad Trademark Office may grant a trademark but it does not take on the job of enforcing that mark. In fact, if a company fails to sufficiently enforce any unauthorized uses of the mark, they may over time lose the ability to actually do so. There are past legal cases in which the entity that has sued for a trademark infringement lost their case based on this fact.

If a trademark owner does initiate action against another entity for what it asserts is an infringement of the trademark, there are a few results that may occur if the decision is returned in their favor. While certainly this may include forcing the other entity to stop using the mark, it may actually also include the defendant paying the plaintiff any profits received through their inappropriate use of the mark.

A trademark infringement generally involves not only use of a mark but use that is designed to deceive those in the market or to otherwise cause confusion about the product, service or company.