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A trademark is a business asset: Why infringements require prompt action

Let’s talk about a business asset called trademark. Remember President Donald Trump’s mysterious tweet on May 31? It read: “Despite the constant negative press covfefe”. That was it. The internet went abuzz. Every news network covered the cryptic message, its meaning and implications extensively. And the comedy shows had a field day or even a field week. No surprise there.

But the stir also reached a federal institution, the U.S. Patent and Trademark Office (USPTO). Within two weeks, companies and individuals had filed 32 covfefe trademarking requests for products ranging from coffee to T-shirts to beer. The applicants obviously realized that covfefe, a memorable neologism, would make for a strong, distinctive trademark.

Which brings me to you: If you own a business that runs under a name other than your own, you probably did your branding homework early on. You found a unique, creative name for your company. You checked via the USPTO website whether the name or a variation of it had already been trademarked. And you made sure that the domain name was still available. You reserved that domain name, claimed your social media identity on the most relevant channels including Twitter and Facebook. You registered your business name with the state government and applied for trademark protection.

So here’s my question: After all the hard work you’ve put into your company and brand, are you still giving your trademark the TLC it needs and deserves?

Trademarks are important business assets. Like any other property, they require maintenance and protection. This includes acting promptly if you discover that another business is infringing on your trademark.

Fitbug Limited v. Fitbit, Inc

Take a lawsuit for trademark infringement and unfair competition that Fitbug brought against Fitbit a few years ago. Both businesses produce activity tracking devices. Fitbug, a London-based company, was founded in 2004. Fitbit, which is San Francisco-based, was founded in 2007.

In its lawsuit, Fitbug alleged that Fitbit began distributing its fitness trackers and related apps four years after Fitbug entered the U.S. market in 2005 and three years after it registered its trademark with USPTO, and that Fitbit’s devices were identical or almost identical to Fitbug’s. It also alleged that Fitbit’s business activities and the use of nearly identical names, marks and services were damaging Fitbug’s business.

A judge for the Northern District of California in 2015 rejected Fitbug’s claims. Basing his decision on a concept called laches, he held that Fitbug had waited unreasonably long before filing the suit. The court determined that Fitbug “should have known of the likelihood of confusion by September 2008,” and that Fitbug had waited four and a half years to sue. The case was dismissed. Eventually, Fitbug lost not only this battle but the entire war against Fitbit. Earlier this year, the British company announced that it was rebranding itself as Kin. It now offers corporate wellness solutions.

The takeaway from the Fitbug-Fitbit fight? If you believe that another company may be infringing on your trademark rights, you should act promptly. In many cases, a firm but polite cease-and-desist letter worded by an experienced attorney will suffice. And if you do end up having to sue, remember that the window for bringing a successful lawsuit is small. It could be less than two years.

By Kevin J. Moore