Lately we are seeing a disturbing trend in foreign companies that manufacture copycat products: some of these companies are now filing for trademark protection in the U.S. on the very brand name they are copying. At first, I couldn’t believe how brazen infringers had become. Not only are they competing with knock-off products but now they are trying to secure trademarks for the original brands — marks in which they have absolutely no rights!

Why would a competitor engage in such blatant fraud? They do so to gain an advantage in the marketplace. Once an infringer owns the U.S. trademark registration, it can actually prohibit sales of the brand name product. The copycat simply files a Digital Millennium Copyright Act (DMCA) take-down notice with an on-line marketplace such as Amazon or eBay alleging that their competitor – the brand originator – is infringing upon the copycat’s newly registered trademark. As proof, the copycat submits its federal registration. The on-line retailer then prohibits sales of the original brand, leaving the market wide open for the infringer’s products.

What can you do to prevent being foreclosed from selling your own product?

1. Register Early: It’s a good idea to file an application to register your trademark as soon as possible. The U.S. allows intent to use applications to be filed prior to actually using a trademark in commerce. Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), provides that an applicant may file an application based on a bona fide intention to use a mark in commerce under circumstances showing the good faith of such person. Therefore, it is prudent to file for trademark protection even before your product enters the market.
2. Monitor Trademark Filings: If you haven’t registered your trademarks, you may want to monitor new trademark filings to make sure that your competitors are not trying to steal your marks. You can either perform this task in-house by searching the U.S. Patent and Trademark Office’s (USPTO) database on a weekly/monthly basis or hire a trademark monitoring service to do so. You want to detect a fraudulent filing as soon as possible.
3. Submit a Letter of Protest: If you do come across an infringer trying to steal your mark while its application is still pending (prior to publication in the Trademark Official Gazette), you can try submitting a Letter of Protest to the USPTO via the Trademark Electronic Application System (TEAS). A Letter of Protest allows third parties to bring to the attention of the USPTO information relevant to the registrability of a trademark. It is best to submit a Letter of Protest when you have filed an application for trademark prior to the infringer’s application.
4. Initiate an Opposition Proceeding: Once a trademark application has been examined by a USPTO examining attorney and found entitled to registration, it is published in the Trademark Official Gazette. The Official Gazette is a weekly publication of the USPTO which publishes newly registered trademarks; it allows individuals who believe they would be damaged by the registration of a published mark with an opportunity to challenge the proposed registration. Once the trademark has been published in the Official Gazette, an individual has 30 days in which to file an opposition to the registration with the USPTO’s Trademark Trial and Appeal Board (TTAB). If such an opposition proceeding is initiated, the applicant will be informed and then must fight for, or abandon, the trademark.
5. Initiate a Cancellation Proceeding: If a brand owner does not proactively engage in any of the items listed above and later discovers that its infringing competitor has successfully registered a trademark on its brand name, then the brand originator would be forced to file a cancellation proceeding with the USPTO’s TTAB. A timely filed cancellation proceeding is similar to an opposition proceeding; however, the infringer is the owner of the disputed trademark during the proceeding, thus allowing it to wreak havoc in the marketplace for the brand owner if it so chooses.
6. Federal Court Lawsuit: The brand originator can always proceed against the infringer in federal court with claims pertaining to trademark infringement, unfair competition and fraud on the USPTO. The originator can then move to stay any co-pending TTAB proceeding (opposition or cancellation) to allow the federal court litigation to proceed.

Now, more than ever, it is important for brand owners to file early for trademark protection. If an infringer tries to steal your trademark, it can be a lengthy and costly proposition to win it back. Opposition and cancellation proceedings before the TTAB are akin to mini-litigation proceedings in which the parties engage in discovery, motion practice and trial. The process can take well over a year for the TTAB to render its decision. Unfortunately, infringers know this and know they can take advantage of the marketplace while the process plays out. Therefore, your best defense as a brand owner is a good trademark offense of proactively registering and protecting your trademark portfolio.