Posts Tagged ‘trademark enforcement’

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Things happen. Especially when monolithic bureaucracies come into play. Allow me a brief aside. Two years ago, when I last went on a true vacation, I passed through a TSA checkpoint. I was wearing flip flops so it would be easy to take off my shoes as I passed through the screening area (always thinking ahead). I deposited my carry-on bag and other stuff, walked through the gamma ray machine, got felt up by a portly gentleman (who looked about as enthused about feeling as I was about being felt), and was about to take my flip flops and go alone my merry way. Then something happened. The TSA agent was really getting into checking out my flip flops. He noticed a flap in the heel area which opened up and revealed a small compartment, inside of which was a miniature pen. Figurative alarms went off on this guy’s face. Needless to say, my wife and I were detained. I explained that my dad bought me the sandals for a birthday present and thought it was a really clever gimmick (it is!) so that if you needed a pen while taking a stroll on the beach, you were Johnny-on-the-spot. Truth be told, I think it’s fairly obvious that the sandals are designed stash items other than pens (in fact, the name says it all: Reef Stash Sandals”, sold here). They called in a supervisor, I explained the situation and apologized gratuitously, and after a while I made it through, lesson learned.

The point is, sometimes its easier to beg permission than ask forgiveness. If you have a registered trademark, and there is any chance your mark could be infringing on other imports, you recording your mark with U.S. Customs pursuant to 19 C.F.R. Part 133, Subpart A.  Section 42 of the Lanham Act [15 U.S.C. Section 1124] and Section 526 of the Tariff Act prohibit the importation of goods which “copy or simulate” registered trademarks owned by U.S. citizens or corporations. Customs officers monitor imports to prevent the importation of goods bearing infringing marks, and can access the recordation database at each of the 317 ports of entry.

The benefit is that Customs enters the mark into its system and your mark is entered into a product specific database used to block illegal imports.  If you suspect your product is being infringed upon, you can and should provide Customs with  information regarding the counterfeit or gray market import, and request ongoing trade advisories for your product.  This allows you to use Customs to enforce your mark preemptively, and is quite cost-effective, especially compared with litigation. Bear in mind, Customs will not exclude infringing goods in cases where the United States and foreign trademarks are owned by the same person, or by related corporations or parties subject to “common ownership or control” pursuant to 19 C.F.R. Sections 133.21(c)(1),(2). Remember that there are far too many marks and too many goods for Customs to monitor without your help, so don’t get complacent.

Still, Customs, like other executive agencies, is not obligated to follow every lead, and may exercise its own judgment relative to enforcement measures, though some courts have found that trademark holders may obtain an injunction requiring Customs to enforce suspected infringement. Regardless, trademark holders retain their full arsenal of civil rights and remedies.

Aaron Thalwitzer is an attorney practicing civil litigation and intellectual property law with Zies Widerman & Malek in Melbourne, Brevard County, Florida.


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After you register your trademark (you do have it registered, right?), you must also maintain your mark. It’s not tough. A little dusting, some lemon oil, and you’re good to go. The key is to make sure your mark, though distinct and hopefully popular, does not become generic. A mark is generic when it no longer identifies the source or origin of a product or service. If Cheerios became a true stand-in for circle-shaped oat-based breakfast cereal (I hope there’s such a thing as dinner cereal!), it would be generic, and other manufacturers could use the term to describe their products.

Usually, “source identification” is lost through abandonment. The holder intentionally stops using the mark for some period without intent to resume use. There’s a trickier type of abandonment: unintentional abandonment, which occurs when an owner fails to properly use the mark or monitor its use by others. A mark which is “improperly used” is in danger of becoming generic. Therefore, always use your mark consistently and distinctively to avoid improper use and possible unintentional abandonment. You also have to police the use of your mark by taking action when a non-owner uses the mark, since that diminishes the mark’s ability to indicate its source. Don’t let others use your mark without a licensing agreement, and if someone else uses it, send them a cease and desist.

Infringers diminish your mark’s source identification powers by increasing the likelihood that consumers will be confused about the origin of goods or services. Again, cease and desist, and if that doesn’t work, prosecute the infringer or risk abandonment of your mark’s rights.

You can even hire a service that will, for a small fee, “watch” your trademark to help maintain your mark’s source identification.


If an unauthorized user will not or cannot afford to change marks after receiving your cease and desist letter, you basically have three options: (1) do nothing, (2) sue them, (3) offer to help them with the cost of a new mark. Given the potential cost of trademark litigation, if may be worth throwing a little money at a problem, to avoid paying for a drawn-out fight. If that is not a viable option, litigation may be your last, best hope for justice. You can sue for money damages and injunctive relief to prevent the unauthorized user from further using your mark, and to impound and destroy the infringing goods. If the user was intentional (e.g. fake Gucci purses) treble damages may be awarded. It’s no accident that litigation is the last option I’ve listed. Litigation should be avoided if possible, but is nothing to be afraid of. A good lawyer will give you an approximation of your costs and the likelihood of success. In the end, you will simply make an informed business decision on whether to enforce your mark.

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By: Mark R. Malek

Many of you may recall that last November I wrote an article about how Facebook was on the receiving end of a trademark lawsuit wherein Lamebook asked the court to determine that Lamebook was not infringing the Facebook mark and that Lamebook was a parody.  As expected, this case has now settled (source).

In the settlement, Lamebook will be able to continue to use their website, and there is no danger to Facebook losing their trademarks.  Sounds fair enough, right?  WRONG!  In this particular case, Facebook lost, Lamebook won, and all the attorneys involved in the case (where I am sure that the bill was several hundred thousand dollars combined) also won.  Some would say that Facebook had nothing to lose.  In this case, however, it was proven that the Facebook’s litigation tactics didn’t work.

Every time that a trademark owner sends out a “cease and desist” notice, they expose themselves to the filing of a lawsuit.  The reason is that these cease and desist notices generally come with some threat of litigation.  The threat of litigation itself is enough to raise a “case or controversy” which the court can hear.  As you know, we have reported several of the Facebook trademark cases here on  Check out our stories here, here, here, here, and here.  It is clear that Facebook vigorously enforces their trademark, and I cannot blame them for that, but sometimes, it is my opinion that their tactics are a little over the top.

Although it probably cost Lamebook a fortune to get to this point, they just proved to the world that Facebook does not own the exclusive rights to the words “Face” and “Book.”  It is ok to make fun of Facebook.  The most important thing about the case is that Lamebook gets to stay in business.  The litigation costs for Facebook are really not a factor.  If they have to spend a few hundred thousand dollars, or even millions, to protect their trademarks, then it is worth every dime.  They have very valuable trademarks.  I think they just need a little policing to make sure they don’t cross over into the trademark bully camp.


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By: Mark R. Malek

Back in September, International House of Pancakes sued the International House of Prayer for trademark infringement and trademark dilution.  We first wrote about this story here.  Of course, we had some fun with the article, but at the same time, provided our analysis of why IHOP (Pancakes) may have had a point.  The LA Times reports that the pancake giant has now dismissed its suit against the religious group noting that the parties have agreed to resolve their dispute out of court.

Since the case was filed, I have observed a lot of chatter (yes I am referring to my fellow tweeps) about how bad the big corporation was for bringing suit against a church.  Dig a little deeper folks.  It is not as though this is a tiny community church of a few families in the middle of nowhere.  This was a very large organization that served the needs of many families.  Further, and according to the article in the LA Times, it is not as though they should have been surprised when the suit was filed.  The pancake giant, like many other trademark holders, sent warnings to the church group.  These warnings are generally in the form of a “cease and desist” notice.

I am one who appreciates a cease and desist notice and take them as an opportunity to remedy a situation prior to litigation.  At the end of the day, if both parties can check the ego at the door, and I mean both parties (even the trademark holder) then there is likely some sort of middle ground that can be reached.  That is not to say that all cases should settle.  In this particular case, the pancake giant really has no choice but to enforce their trademarks.  If they do not, then their trademarks become nearly valueless.  This case wound up in litigation because their notices (or attempts to resolve the matter) apparently went ignored.  What choice did they have?  It is overly-aggressive enforcement of trademarks that drives me nuts – see my series on Facebook here, here and here.

It is unclear what the terms of the settlement are, but I suspect that the settlement will include some sort of terminology that preserves IHOP’s (Pancakes) rights to enforce its trademarks, and some sort of recognition by IHOP (Prayer) of the validity, distinctiveness, etc. of the IHOP (Pancake) trademarks.  The moral of the story is that if you find yourself on any side of a trademark dispute, you really should attempt to engage in meaningful settlement negotiations prior to taking the dispute to the next level, i.e., costly litigation.  Any attorney that tells you otherwise is really just looking out for his/her own interest!




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