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Trademark Myth #2: Trademark rights can only be enforced in court

Business owners frequently believe that filing a lawsuit in court is the only way to protect and defend a trademark. However, there are several less expensive trademark enforcement alternatives available. A business who owns either “common law” rights in a trademark, or a Federal trademark registration, can take several less expensive and time consuming actions to enforce the company’s trademark rights:

•Letters of Protest: these are filings with the U.S. Patent and Trademark Office to put the Examining Attorney on notice that you believe a newly filed application is problematic.

Trademark Trial and Appeal Board Opposition Proceedings: After a Federal trademark application is published for opposition, parties have 30 days to file an opposition (or request extension of time for same) if they believe they have prior rights that would conflict with the trademark at issue.

•Cancellation Proceedings: For the first five years following registration, a trademark is vulnerable to an action to cancel it on various grounds. If the Section 8 and 15 affidavit is timely filed, after the 5th-6th year, the registration becomes “incontestable” to such actions.

These methods of trademark enforcement are intermediate steps that should be considered before filing a full-on Federal lawsuit for trademark infringement.

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