Protecting Your Intellectual Property: Part II | Butler Snow LLP

In our previous article, we discussed the importance of upstream intellectual property (IP) protection and seeking legal advice to help us develop a strategy to better navigate the complex intellectual property landscape. . We looked at the different types of intellectual property, key considerations for protection, filing processes, and the strategy behind building a plan with legal counsel. In this article, we’ll cover the ways you’ll need to enforce your trademark or patent after registration, the nuances involved in maintenance and renewal filings, and the role of legal counsel in that process. We will discuss the main post-registration procedures as well as the importance of trademark or patent enforcement.

Now that you’ve protected your IP address, how do you go about post-registration?

Once you have obtained registration, it is in some cases necessary to monitor your trademark to maintain the scope of protection afforded by the registration and to prevent the illegal use of your intellectual property by a third party. This does not mean taking legal action against all possible offenses. However, for example, if a third party’s mark is close enough that there may be consumer confusion, it is important to assess whether the challenge of the third party mark is necessary to maintain the scope of the protection of your brand as soon as possible. There are a number of ways to dispute a claim, and even at this initial stage, legal advice is essential to streamline pre-litigation procedures and offer appropriate advice as you work to maintain protection.

There are two main ways to challenge the domestic use of a trademark: through the Trademark Trial and Appeal Board (TTAB) or through the federal court. Once a trademark application has been reviewed and authorized by a trademark examining attorney, the application can be challenged with the TTAB. Authorized applications are published in the Official Trademark Journal for thirty days to inform third parties of the application. From the date of publication, third parties have a period of thirty days to oppose or extend the period to oppose the request.

In the section below, we will discuss the process of identifying potential third-party breach threats.

Third party infringement of trademark and patent rights

At this point in the application of your intellectual property post-registration, you will need to identify potential threats from third parties of infringement of your particular intellectual property rights. For example, you want to ensure that third parties do not infringe or dilute your mark by using a mark too similar to your own in connection with related goods and services or by practicing the process or composition claimed in your patent.

To keep up with new common law uses of a trademark and federal trademark applications, there are research companies that monitor and report these new occurrences. Your legal advisor can work with the research provider to help you make an informed decision about whether or not to challenge the new mark in question. These research companies perform similar authorization and surveillance searches for patents. Proactive monitoring of third-party uses of trademarks and related patents puts you in a better position to enforce and maintain your intellectual property rights.

Maintenance and renewal deposits: Patents, trademarks and other IP

Another important consideration in the post-registration process is navigation through maintenance and renewal repositories. There are different requirements and deadlines for filing procedures. Without proper planning, you could run into unnecessary costs or even lose the rights to a specific IP registration. Whether you are dealing with patents or trademarks, it is essential to proactively track maintenance and renewal requests as part of your ongoing strategic plan.

With this in mind, it is rare for a company to have only one trademark or patent registration. Instead, most companies have an intellectual property portfolio that includes multiple brands or a family of patents. This is why having a proactive maintenance plan is a key factor in the successful enforcement of intellectual property rights. In addition, the legal advisor will play a key role in advising on the extension of protection within an intellectual property portfolio. For example, they might recommend extending the scope of a trademark registration when the trademark is used in association with additional goods and services or filing a patent application based on the commercial use of the technology and identify the additional deposits needed to facilitate these extensions.

When it comes to maintenance and patent and trademark filing practices, there are some commonalities but most are unique and dealt with on a case-by-case basis. One thing in common is that patents and trademark registrations require a maintenance renewal fee to keep the registration alive after a specified period of time. Tracking and maintaining records can be difficult for businesses if they have many records, especially if they are navigating this process without legal assistance. Legal teams will track and keep all relevant due dates in order while advising on things like what type of renewal request to submit. They will also provide advice on the scope of renewals and the associated costs prior to any deadline in order to preserve your intellectual property rights.

The role of legal counsel in post-registration procedures

Costs and potential outcomes are things you need to discuss with a lawyer to understand the investment and the potential risks and rewards associated with maintaining and enforcing your intellectual property rights. In this area, it is a case-by-case analysis when it comes to identifying third party infringement and taking action in certain cases. This is where your legal strategist will work with you to develop a post-registration plan for protection and enforcement, including potential next steps in the event of a breach. Whether you are dealing with trademark, patent or copyright matters, legal counsel will help you navigate the nuances of this process while providing you with resources and knowledge for future use. They will also provide structure and guidance at every step of the complex IP protection and enforcement processes.

In addition to the uniqueness of each infringement case, a lawyer can help you find the most beneficial and fastest resolution options to reduce costs, risk, or any kind of loss of your intellectual property rights.


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