I frequently help clients to enforce their trademark rights without resorting to litigation. One way to do this is to work with U.S. Customs and Border Protection ("CBP"). If a U.S. trademark registration is recorded with CBP, they will monitor goods imported into the country for infringements. If CBP finds infringing goods, they will seize the goods. Several years ago, CBP found two shipments of labels bearing my client's mark that were destined for the same address in the U.S. We investigated the matter, and eventually, law enforcement conducted a raid at that address after determining that counterfeiting was going on. Another way to enforce trademark rights without litigation is to take advantage of the take-down mechanisms offered by most online platforms, such as Amazon, Google, YouTube, and others. A complaint that complies with the platform's requirements (each platform can have its specific requirements) can be very effective in removing infringing products or content. It can also be faster than litigation. When I have submitted such complaints on behalf of clients, the material at issue has generally been removed in a matter of days. A notice letter is another effective way to enforce trademark rights without litigation. I have worked on matters where the recipient of the letter has agreed to stop their conduct upon receipt of the letter. While effectively enforcing trademark rights without litigation is possible, litigating is sometimes necessary. Why would litigation be necessary? Occasionally, an infringer will not stop without a court order. In most trademark enforcement litigation that I have been involved in, litigation has been the last resort after other enforcement mechanisms have not achieved the desired result. In other cases, litigating is necessary to create a reputation for enforcing one's rights. If third parties know that you enforce your rights, they may be less inclined to infringe. If someone seeks to enforce their trademark rights, they should speak with experienced trademark counsel about their options and develop an enforcement plan. It is important to speak with experienced counsel to fully understand the pros and cons of each type of enforcement mechanism. It might be possible to recover monetary damages in litigation, but is the goal to recover money or stop the infringing conduct? Speaking with experienced counsel can help one focus on what they seek to achieve and what can be acheived.
Trademark rights are enforced by asserting them, for example, in a cease and desist letter. While a registration is not needed to enforce trademark rights, it is valuable to have as an adversary will appreciate the registration as evidence of the asserting party’s rights in a trademark. Thus being able to claim that you have a registered trademark supports your claim in a cease-and-desist letter. The stronger you can make that letter the more effective it will be in avoiding litigation. How do you make a letter strong? For one, it should be drafted to emphasize the strength of your case and not be boilerplate. A good trademark attorney can tell the difference and will appreciate the seriousness of your client’s claim based on the tone of your letter, as well as the care that was taken in drafting it and the details provided. A good letter shows that the attorney sending the letter has thought through the factors that are necessary to show that there would be infringement and, by communicating those issues in the letter, effectively avoids litigation because the attorney on the other side sees how the case will be presented to a court and appreciates if his/her client would be liable for infringement if the matter is not resolved at this letter writing stage. So yes, this is done all the time by trademark attorneys, as only a small percentage of matters actually go to litigation. Litigation is very costly, and a client is best served by attempting to resolve the matter from the get-go by presenting your case in such a letter to the adversary, and hoping that the attorney the adversary hires has the good sense to appreciate the weakness of their client’s case and the integrity to properly advise their client that their client’s case is weak and its conduct could result in a finding of infringement if litigation is pursued.
A cease and desist letter is the most tried-and-true method of enforcing trademark rights without resorting to litigation. A well written C&D letter puts an alleged infringer on notice of a trademark owner's rights, lays out facts related to a particular alleged infringement, and (ideally) opens the lines of communication between the alleged infringer and the trademark owner. A C&D letter can also help the trademark owner evaluate whether or not the alleged infringer will engage in the dispute resolution process. If the alleged infringer does not engage (read: respond), the letter can further the trademark owner's willfulness case should the dispute end up in litigation, especially if a default judgment ends up being entered against the infringer.