Trademark protections and enforcement

Glenn W. Peterson

Businesses in California who have special designs, names, logos or other assets that they wish to protect may seek to be granted a trademark. As explained by the United States Patent and Trademark Office, a trademark must be formally applied for and offers the receipient the ability to indicate that the trademarked designation is theirs and has some market recognizeability as such.

One of the things that not everyone may know is that while the USPTO reviews applications for trademarks and ultimately grants trademarks, it does not enforce the trademarks at all. Instead, the responsibility to enforce this type of intellectual property lies solely and squarely with the trademark owner. This theoretically means that a competitor could use a trademarked product name or logo, for example, quite successfully and even for a long period of time if the company that owns the trademark does not do anything about it.

An example of this can be seen in a case involving college Greek life paddles. Forbes notes that a company had been making and marketing these items using the trademarked fraternity and sorority symbols for nearly 30 years before being approached by Greek entities. The organizations requested that they join their authorized programs that would legally allow him to use their symbols.

The paddle maker was able to avoid punitive action by asserting what is called a defense of laches. This hinges on the fact that the trademark owner failed to protect their intellectual property and therefore in some fashion gave up the right to enforce it at least on that one company.