Protecting Your Inte ...

Protecting Your Intellectual Property: Part II

October 6, 2021 | by Butler Snow

In our previous post, we discussed the importance of front-end intellectual property (IP) protection and seeking legal counsel to help build out a strategy to best navigate the intricate IP landscape. We delved into the different types of IP, key considerations for protection, filing processes and the strategy behind establishing a plan with legal counsel. In this post, we’ll address the ways in which you’ll need to enforce your trademark or patent after registration, nuances involved in maintenance and renewal filings, as well as legal counsel’s role in this process. We’ll discuss key post registration procedures as well as the importance of trademark or patent enforcement.

Now That You’ve Protected Your IP, How Do You Enforce Post Registration?

Once you obtain registration, there is a requirement, in certain instances, to police your trademark to maintain the scope of protection granted by the registration and avoid illegal use of your IP by a third party. This does not mean filing a lawsuit against every possible infringement. However, for instance, if a third party’s trademark is close enough that there could be consumer confusion, it is important to evaluate whether challenging the third-party trademark is necessary to maintain the scope of your trademark’s protection as soon as possible. There are a couple of ways to challenge an application, and even in this beginning stage legal counsel is essential in streamlining pre-litigation procedures and offering proper guidance as you work to maintain protection.image of a lightbulb wrapped in a cord, with two cartoon people climbing a ladder to reach the lightbulb

There are two main ways you can challenge national use of a trademark: through the Trademark Trial and Appeal Board (TTAB) or through the federal court. After a trademark application is reviewed and allowed by a trademark examining attorney, there is an opportunity to challenge the application with the TTAB. Allowed applications are published in the Trademark Official Gazette for thirty days to provide notice of the application to third parties. From the date of publication, third parties are given thirty days to oppose or extend the time to oppose the application.

In the section below, we’ll discuss the process of identifying potential third-party threats of infringement.

Third-Party Infringement of Trademark and Patent Rights

At this stage of enforcing your IP post registration, you’ll need to identify potential third-party threats of infringement of your particular IP rights. For example, you want to ensure third parties are not infringing or diluting your brand by using a trademark too closely resembling your own in connection with related goods and services or practicing the process or composition claimed in your patent.

To track new common law uses of a trademark and federal trademark applications, there are search companies which monitor and report such new occurrences. Your legal counsel can work with the search vendor to help you make an informed decision regarding whether or not to challenge the new trademark in question. These search companies conduct similar clearance and monitoring searches for patents. Proactively monitoring third party uses of related trademarks and patents puts you in a better position to enforce and maintain your intellectual property rights.

Maintenance & Renewal Filings: Patents, Trademarks & Other IP

Another important consideration in the post registration process is navigating maintenance and renewal filings. There are differing requirements and timelines regarding filing procedures. Without proper planning, you could run into unnecessary fees or even lose rights to a specific intellectual property registration. Whether you’re dealing with patents or trademarks, it is essential to proactively track maintenance and renewal filings as part of your ongoing strategic plan.

With that in mind, it’s rare for a business to only have one trademark registration or patent. Instead, most businesses have an IP portfolio that includes several trademarks or a family of patents. This is why having a proactive maintenance plan is a key factor in the success of enforcing IP rights. Additionally, legal counsel will play a vital role in advising on expanding protection within an IP portfolio. For example, they might recommend expanding the scope of a trademark registration when the trademark is used in association with additional goods and services or filing a continuation of a patent application based on commercial use of the technology and will identify additional filings necessary to facilitate such expansions.

When it comes to maintenance and filing practices with patents and trademarks, there are some commonalities but most are unique and handled case by case. One commonality is both patents and trademark registrations require maintenance renewal fees to keep the registration alive after a specified time frame. Tracking and keeping registrations current can be difficult for businesses if they have numerous registrations, especially if they are navigating this process without legal assistance. Legal teams will track and keep all relevant due dates in order while also advising on things like which type of renewal filing to submit. They will also provide counsel on the scope of renewals and associated cost in advance of any deadlines to keep your IP rights intact.

The Role of Legal Counsel in Post Registration Procedures

Cost and potential outcomes are things you must discuss with an attorney to understand the investment and potential risks and benefits associated with maintaining and enforcing your intellectual property rights. In this arena, it is a case-by-case analysis when it comes to identifying third-party infringement and taking action in certain instances. This is where your legal strategist will work with you to come up with a post-registration plan for protection and enforcement, including potential next steps in case infringement occurs. Whether you are dealing with trademarks, patents or copyright issues, legal counsel will help you navigate the nuances of this process while equipping you with resources and knowledge for future use. They will also provide structure and counsel at each stage of the complex IP protection and enforcement processes.

In addition to the uniqueness of each case of infringement, an attorney can help you find the most beneficial and quickest resolution options to reduce cost, risks or any kind of loss of your intellectual property rights. Butler Snow’s attorneys are at the ready to assist with any IP matter you may be facing.