A trademark can be among a company's most important assets. But are you safeguarding your client's trademarks like the valuable capital they are? A critical component of managing a trademark portfolio is implementing an effective policing and enforcement strategy to protect these trademarks from infringement and misuse. Without proper and timely enforcement, trademark rights may be lost.

A loss of trademark rights can have significant consequences for the rights' owner, such as a decline in:

An effective trademark policing and enforcement strategy typically includes processes and procedures for:

An effective trademark policing and enforcement strategy includes a system for monitoring the marketplace for infringements and misuse of company trademarks by third parties. Infringements and misuses should be identified as soon as possible after they arise. In infringement cases, unreasonable delay may bar awards of:

Quickly identify and act on infringements to avoid losing an infringement case on substantive grounds. A court may find that long-term marketplace coexistence of two marks without actual confusion defeats an infringement claim by showing that confusion between the two marks is unlikely.

Marketplace monitoring options include:

Proper trademark policing and enforcement requires investigating suspected instances of infringement and misuse of the company's marks. Sometimes the nature and extent of the infringing activity is obvious from readily accessible public information, for example, the infringer's website. However, the full extent of the infringer's activity is often difficult to discern. In these cases, counsel should have a trademark owner consider engaging an experienced trademark investigator to obtain relevant information, including:

The results of the investigation may dictate a particular course of action or may suggest taking no action at all. For a discussion of trademark investigations in the trademark searching and clearance context, see Practice Note, Trademark Searching and Clearance: Investigations of Potentially Conflicting Marks.

Counsel should establish parameters and criteria for determining what, if any, action to take against identified infringements and misuse of the client's marks.

One of several options for dealing with a suspected infringer is to send a cease and desist letter. The proper tone of a cease and desist letter depends on many factors. While an aggressive tone may be appropriate in cases where an alleged infringer's activities are clearly willful and causing or about to cause significant harm to the trademark owner, in other cases a more restrained approach may be more likely to yield the desired results. Counsel and its client should also consider that if the brand owner is overly aggressive in enforcing its brands, it risks being labeled a trademark bully.

For an in-depth discussion of the strategy behind drafting effective trademark cease and desist letters, be sure to tune in to Practical Law's free webinar, Opening Move: A Primer on Trademark Cease and Desist Letters on Thursday, October 9, 2014, at 1:00 pm ET.

This webinar is approved for 1 hour of NY CLE credit and covers:

To learn about these issues and more, visit the registration page.

For a sample trademark cease and desist letter, see Standard Document, Cease and Desist Letter: Trademark Infringement. For a discussion of key considerations for drafting a cease and desist letter, see Practice Note, Drafting an Effective Trademark Cease and Desist Letter.