Auditing, Monitoring and Enforcing Your Greek Organization’s Trademarks

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Robinson Bradshaw Publication
Aug. 25, 2014

Most Greek organizations understand the need to protect their trademarks, including the organization’s name, nicknames, Greek letters, crest or other insignia, and take the initial steps to secure such rights by federally registering their trademarks. However, most do not realize that registration alone is not sufficient to ensure complete protection. Organizations need to regularly audit, monitor and enforce such rights in order to maintain exclusive ownership over such registered rights which can be lost if others begin using the marks without permission.

Trademark Audits

Audits of your organization’s trademark portfolio should be performed regularly in order to manage, protect and fully exploit the value of your existing trademarks. These audits, which can be performed internally or with assistance of counsel, can be very useful to identify what trademarks are currently being used, which of these trademarks are registered, which trademarks should be registered but are not, whether or not the existing registrations cover all goods or services provided under the marks and whether or not ownership of the marks are properly designated and recorded.

Trademark Policies and Notice

Additionally, the audits can provide your organization with an opportunity to examine whether or not your trademarks are being properly used and that usage policies are updated. Within these usage policies, your organization should clearly spell out what marks should be used, how and when they should be used and what trademark notice should be applied. The appropriate use of the ® can become particularly important if your organization is forced to bring an infringement action. If you omit the use of the ®, you must prove that the infringer had actual notice of your registration in order to recover damages or profits.

Enforcement of Rights

As a trademark owner, you also have the legal right and obligation to protect your trademarks from unauthorized use or misuse. Failure to enforce such rights may result in (i) consumer confusion regarding the source of your goods or services thus eroding your rights to the exclusive use of the mark, (ii) harm to your reputation or the reputation of a particular good or service (particularly if infringing goods are of an inferior quality) and/or (iii) the devaluation of your trademark. Therefore, monitoring and enforcing your rights is essential.

Cautionary Tales

The familiar and on-going case involving various Greek organizations clearly demonstrates the consequences of your failure to enforce. In this case, Abraham v. Alpha Chi Omega, Thomas Kenneth Abraham began manufacturing products related to Greek organizations in 1961. He continued to manufacture, sell and advertise products bearing the trademarks of fraternities and sororities, particularly paddles, for 31 years without issue until he received a cease and desist letter in 1990. Despite the notice, it took another 17 years for the battle to erupt into litigation. Abraham did not dispute the infringement but instead maintained a defense of laches. Laches is a doctrine that an infringer may assert when a trademark owner fails to enforce their trademark rights with no justifiable basis for doing so. A successful laches defense bars monetary damages for past infringement and can overcome a claim of injunctive relief if the court determines that the trademark owner’s unreasonable delay prejudiced the infringer. Although the court did not conclude that Mr. Abraham was prejudiced in connection with all products, and therefore, enjoined him from continuing to sell most products, they did permit him to continue the sale of decals and paddles which represented the majority of his sales.

Balancing Act

Although lack of enforcement can result in loss of your rights, you are not required to object to all unauthorized uses, for not every third party use poses the same risk of eroding the distinctiveness of your mark. According to the doctrine of progressive encroachment, the owner of a mark has no obligation to sue until the likelihood of confusion “looms large.” In fact, an overly aggressive enforcement program can result in unexpected injury to your mark. This is especially true in today’s society due to the internet and social media which allow third parties to easily broadcast complaints and other forms of bad press nationwide with a touch of a button. Nonetheless, your failure to enforce your rights against widespread unauthorized uses may weaken the strength of your trademark as a source identifier of your goods and services, which in turn can result in your inability to enforce your rights generally or against a specific infringer.

Practical Solutions

One way to effectively monitor the marketplace for potential issues is to subscribe to a trademark watch service that will monitor national and/or international trademark registers. These watches, performed by third party vendors and reviewed by counsel, are good tools to alert you of: (i) infringing trademarks, (ii) new trademarks launched by others that may be similar to your trademarks, and (iii) applications of similar trademarks which have been wrongfully allowed by the applicable trademark office. These watches are also helpful to ensure early detection of infringement or misuse, which is essential as the law prescribes particular deadlines for the submission of an objection (opposition) to an existing registration or application.

Although the watches are excellent tools to use to identify infringement and misuse, no one knows your market and/or competitors better than you. Therefore, you should also perform regular internal searches (internet, in particular) to reveal misuses and other infringing activity.

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