Trademark Use Investigations
In the dynamic and multifaceted world of commerce, understanding how trademarks are utilized is essential for informed decision-making. Trademark Use Investigations – in-use, first-use, or non-use – are frequently a foundational element in assessing the landscape surrounding a particular mark.
Whether related to a registration, application or common law use, these investigations cut through assumptions and claims, providing evidence and insights beneath the surface to guide next steps.
Common reasons for these investigations include:
- Assessing Potential Conflicts: Determine if existing trademarks are actively used to evaluate potential legal obstacles when considering adoption of a new mark.
- Establishing Priority: Identify which party used a mark in commerce first, crucial for resolving disputes over ownership rights.
- Evaluating Extent of Non-Use: Gather evidence of a registered mark’s non-use, abandonment or lapses in continuous use to support cancellation proceedings, potentially clearing the way for new registrations.
- Monitoring Competitors: Understand how competitors utilize their trademarks to inform strategic business decisions and identify possible infringements.
- Evaluating Third-Party Use: Investigate unauthorized, infringing or conflicting use of trademarks by third parties to support a larger strategy for enforcement, defense, or brand protection.
- Supporting TMA Expungement or Reexamination Proceedings: Conduct a thorough reasonable investigation to gather evidence and related documentation of non-use as required under the Trademark Modernization Act of 2020.
Investigation Basics & Beyond
Simply put, these cases often center around the who, what, when, where, why, and how — who is using the mark, on what, since when and where, why that mark was chosen (if necessary), and how it is being used. These investigations consist of details about the mark’s use in commerce, including background information on the entity, analysis of its digital footprint, and evidence of first use, current use, or intended future use.
With these basics in mind, we tailor each investigation to align with your specific end goals and legal strategies, ensuring relevant, actionable insights backed by robust evidence. Whether focused on use within the U.S. or international markets, we approach each investigation by considering any unique context or requirements to support your objectives effectively.
Timing & Strategy: Proactive, Reactive or Defensive
As investigators, our mission is to uncover answers and collect related evidence in accordance with best practices, legally and ethically, regardless of the circumstances that created the need for our service. However, the timing and strategic intent of any investigation can shape both the approach and outcomes significantly.
This is particularly true for trademark use investigations, which often involve quicker, short-term efforts to address immediate needs compared to long-term projects where timing is more flexible. Discreet undercover contact with other parties is frequently part of these investigations but may not always be feasible.
These factors influence not just the depth and scope but also the available actions and investigative methods. While it may be hard to anticipate and understanding that life is full of surprises, proactive investigations are often more comprehensive, cost-effective, and less stressful for all involved, compared to reactive or defensive investigations, which carry a higher degree of urgency.
- Proactive Investigations are conducted in anticipation of potential challenges or to assess a potential adversary before throwing the first punch. In a trademark use context, these investigations allow for a thorough exploration of the mark at issue, as well as the owner or associated parties. This can include opportunities for undercover contact with the primary subject or related third parties. Early evidence gathering through proactive strategies can strengthen your position for future filings, support legal arguments, or prepare for enforcement actions.
- Reactive Investigations respond to new or unexpected events, such as receiving an Office Action from the USPTO or a cease-and-desist notice. These focus on obtaining key facts to understand the situation, assess risks and address immediate concerns. The option for undercover contact may depend on the opposing party’s representation status and urgency. Reactive approaches need agility, balancing speed with thoroughness to ensure comprehensive findings. Like defensive investigations, they can be challenging if the other party is aware of a potential conflict.
- Defensive Investigations are typically driven by the need to defend against existing claims or challenges, such as infringement accusations or priority disputes. These investigations are more focused, gathering precise evidence to counter claims or protect one’s position. The scope of contact, whether undercover or direct, depends on the legal context and representation status. Undercover contact is generally inadvisable in such cases.
These factors influence not just the depth and scope but also the available actions and investigative methods. While it may be hard to anticipate and understanding that life is full of surprises, proactive investigations are often more comprehensive, cost-effective, and less stressful for all involved, compared to reactive or defensive investigations, which carry a higher degree of urgency.
Ensuring Comprehensive Support: Key Intake Considerations
Given the nature of trademark use investigations and the various influencing factors, we aim to be your informed ally from the outset. To adapt our approach and employ the most effective strategies, we ask these essential intake questions (at a minimum):
Contact us to explore how an investigation may benefit your next steps.
- Is the other party represented by counsel or on notice regarding this matter?
- Are we permitted to contact the other party or related parties using a suitable approach? (Note: Even if applicable based on the situation, we will only use this tactic with your approval.)
- Have you (or your client) been in contact with the other party(s) and/or conducted relevant research to date? (Note: This history is helpful to know, particularly if it generated additional questions, suspicions or the other party may be on alert.)
- Are there any timing sensitivities we should be aware of?
- Will the findings be used as part of a verified statement for an expungement or reexamination filing under the TMA? (Note: This impacts our reporting structure and the need for additional documentary evidence of non-use, which is not typical for most investigations.)
Contact us to explore how an investigation may benefit your next steps.
Why Us
Offering Intellectual Property (IP) investigations & brand protection solutions globally since 2003.
Connect
How may we help? We look forward to your feedback.
