Is your Legal Department doing enough to monitor and enforce your business-critical intellectual property (IP)? The answer to this question may very well ultimately affect whether or not you may maintain rights in and to your IP. For example, trademark owners have an affirmative duty to police their trademarks and service marks or risk losing them. Rest assured, experienced and savvy trademark lawyers in any dispute, such as trademark infringement, will ensure that proper monitoring and enforcement efforts were taken in order to maintain a valid and enforceable mark.
In my experience, most Legal Departments, even if your financials shows a line item for legal expenses/fees, do not sufficiently monitor their IP. Sure, you may periodically do your own searches, using Google or otherwise, to see what copycats are out there. You may even use a third party provider to “monitor” your IP. However, have you ever really taken the time to understand the monitoring and act on it accordingly? What marks are being searched? Does the search include USPTO records only or also common law usage? What images or other website content is being identified? How are domain name registrations being flagged? What affiliate usages are being reviewed? When you get a monitoring report, what is being done with it? These are all questions that can be answered, but have they been?
Similarly, most Legal Departments do not take proper enforcement efforts. Typically, most wait for a confused customer to bring a trademark, copyright or even patent issue to your attention, and then send a boilerplate cease and desist letter. While this may be a good start, it is not the only option and may not be the best one. It may not even be required, depending upon the particular facts, which may then only lead to risk for the company and you. I always say that there is a major difference between a notice letter, a demand letter and a cease and desist letter. Tone aside, the specifics of the legal request must match the business goal, and your attorneys are doing you a disservice if this is not happening. Enforcement does not have to mean scorched-earth litigation, though there may be a time and place for it. Instead proper letter writing, dispute resolution and even litigation should be considered and explored for taking action.
Remember, your company worked really hard to create and/or acquire its IP. Spend some resources understanding how you should be properly monitoring and enforcing it. A combination of monitoring tools and attorney review and analysis, consistent with your company’s goals, can be achieved by expending reasonable resources. Failure to do so may lead to far greater expense.