Trademarks are something that if not well researched, may trip up an advisor just as his or her business hits its stride. In this second of our series on trademark law, we address a few basic rules of protection, and explain how to fight a claim that your business has encroached on trademark rights.
My partner and trademark expert Craig Hilliard says that one of the most important principles of trademark law is that your rights arise upon your first use of the mark, and not upon some step to formalize protection, such as registration with the U.S. Patent & Trademark Office. Consequently, even if you have yet to secure a registration (or decide not to pursue one at all), you still have rights if another firm tries to use it.
Therefore, once you start using the trademark to describe your client services, periodically monitor the internet and other public sources of information — at least quarterly — to determine if someone else has encroached on your rights.
This is important, for if you “sleep on your rights” you may unwittingly forfeit your ability to ask a court to use its equitable power to force an infringer to stop using the confusingly similar name or design. Because damages are somewhat difficult to prove and recover in a trademark lawsuit, this power to compel the infringer to stop its use of your trademark (known as an “injunction”) is often the most powerful arrow in the quiver.
What if you find someone is using your trademark or logo or something very similar to it? Craig advises to assess your options, which include: 1) sending a “cease and desist” letter to the other firm, demanding that it stop its use and (in some instances) that it account to you for your losses; 2) filing a lawsuit in an appropriate federal or state court; and 3) forgoing any formal action.
These are not mutually exclusive options. Often, you can opt to advise the other firm in a “cease and desist” letter of your trademark rights, and then file a lawsuit only if they refuse to favorably respond to that letter. In other instances, the damage to your rights may be significant enough that you may choose to immediately file a lawsuit.
Notifying the other firm in a letter of your rights in your trademark is important because you can later rely on that letter to demonstrate that the other firm was put on notice and therefore, it should be liable for enhanced remedies for the “willful” infringement of your mark.
What do you do when you land on the other side of a “cease and desist” letter or a lawsuit? Immediately check whether any insurance coverage exists to defend and indemnify the firm.
Firms often neglect checking insurance coverage, and they do not even realize that they may have “advertising injury” coverage or similar provisions in their commercial policies to bring their carrier to the table.
Even if there are doubts about coverage, insurers often will defend the claim, even if they are reserving their right to contest indemnity at a later date. This is because trademark infringement claims can be very expensive to defend. Having the insurer at the table early in the game can make a great difference.
Once the coverage issue is resolved, it’s critical to develop an early defense strategy. Federal and state trademark law does not provide (usually) for the shifting of attorneys’ fees to the successful litigant, so unless you have good coverage in place, prevailing in court on the defense of the claim can often be a Pyrrhic victory because of the costs of that defense. That is why any good defense strategy should be focused as much on the opportunities for an early, consensual resolution of the claims, as on the vigorous defense of those claims in a courtroom.
Thomas D. Giachetti is chairman of the Securities Practice Group of Stark & Stark, a law firm with offices in Princeton, New York and Philadelphia that represents investment advisors, financial planners, BDs, CPA firms, registered reps and investment companies, and is a regular contributor to Investment Advisor. He can be reached at firstname.lastname@example.org.