How to protect my trade mark?

[joe_smith]

I own a trademark that is registered. Someone else is using same trade mark as mine on the same goods. They have had more success than me. I have only sold a minimum amount but continue to sell online and in a small number of stores. Is my small size a factor in me protecting my trademark rights?

[darren]

Generally speaking, no, your sales volume (your use in commerce volume, if you will) is not relevant.

To maintain your trademark rights, though, you must take some affirmative action. If you don't you greatly risk losing your mark.

[joe_smith]

What affirmative action can he take, at least commercially, other than to "continue to sell online and in a small number of stores?" What if his means are limited? How much additional burden on the trademark holder, who has already jumped through the hoops of registration and is actually marketing his product, is it fair to place? Trademark registration, to have any value, surely ought to amplify a trademark's holder's ability to defend his/her mark. But if a mark is continually vulnerable to attack from those with deeper pockets, then registration would appear to have little evident or useful purpose, except among like-sized, or similarly endowed entities. But if you mean that he ought to take legal action rather than commercial action, does not the same rule apply: that whoever can pay the most generally will win? How this fosters a healthy public policy environment is difficult to discern. Would not a system of bribery ultimately be more efficient and predictable, if not more honest in the naive sense?

[tony_blayer]

Affirmative commercial action might be, for example, to increase spending on advertising, in order to make better known his use of the mark, or it might be to attend a national trade show associated with his business for the same purpose. Maybe he's just been lazy and hasn't had any serious lack of means.

None of the questions was rhetorical. But I readily can imagine that you found the questions irrelevant to the legal discussion. I do not think that they are. Questions about the fairness of outcomes seem to me to be always relevant to legal discussions, with this reservation: that usually nothing can be done about clusters of unfair outcomes from within a particular legal system (ours, or canon Law, the Sharia, continental statute law, etc.) at a particular time. They need to get addressed politically first.

In this connection, a lobby-related forum might be useful. Many patent and trademark related issues get very heavily lobbied.
It's not that I found your points irrelevant to the legal discussion, it's just that most of your points missed the mark. I represent the "little guy" almost exclusively, and my clients have been very able to protect their marks against infringers large and small.

You should educate yourself on the way things actually work, not how you think they might work, and then come back for a real discussion. I'd gladly discuss policy issues with you.

[Kevin Lee]

I own a trademark that is registered. Someone else is using same trade mark as mine on the same goods. They have had more success than me. I have only sold a minimum amount but continue to sell online and in a small number of stores. Is my small size a factor in me protecting my trademark rights?

Hi joe_smith,

My lawyer once told me that I could write a cease and desist letter letting my competitor know that they were infringing on my trade-marks and copyright. She also mentioned that I could ask them to enter into reasonable discussions for a license to use my ideas or my site. Furthermore, a possible purchase arrangement might also be possible.

On the other hand, my business coach suggested approaching a large competitor who is infringing on my trademark with an affiliate opportunity.
"Think cooperation, not competition" because the LARGE competitor will always have more money to spend on legal costs and your resources will drain out far sooner before the case is even settled.