dence from outside the company, as occurred in this case. Consult IP counsel promptly for assistance in resolving issues such as potential infringement.
...or not enough?
Not only will the court look at actual knowledge of a potential infringement claim, but it will also consider constructive knowledge. That means that if your company should have known about the potential claim, a court will hold your company responsible—as if you had actually known the relevant facts. For example, Fitbit publicly announced its products a full year before it actually sold any products. So, Fitbug was charged with knowing about the competitor from the time of the announcement, regardless of whether or not Fitbug actually was aware of the Fitbit announcement. What the plaintiff did: Fitbug ignored or minimized the importance of information, such as the “heads-up” letters discussed above, that should have triggered action. What your company can do: Police your company’s IP through a watch service or another reliable system. Act promptly, with the advice of counsel, on information about possible infringement, and organize a follow-up in doubtful cases.
Watch your back.
An effective policing effort will inform IP owners of potentially infringing applications before the U.S. Patent and Trademark Office. The owner of a trademark registration can then oppose that new application before the Trademark Trial and Appeal Board. If the Opposition proceeding is successful, the new application will be refused registration. In addition, the successful Opposition may make it possible to prevail in a lawsuit against the competitor. For example, in the Fitbug v. Fitbit case, Fitbit filed a trademark application just before its product announcement. The application covered goods similar to Fitbug’s. What the plaintiff did: Apparently, Fitbug either remained unaware of or took no action to oppose Fitbit’s trademark application, even though Fitbit’s application was published for opposition in January 2009. As a result, Fitbit sailed through the 30-day opposition period and received a Certificate of Registration in December 2009. So, when Fitbug finally sued Fitbit in March 2013, Fitbit had already been holding a federal registration for more than three years. What your company can do: Retain a watch service or other system for policing your company’s trademarks to keep
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your company informed of trademark applications before the Trademark Office, as well as in other countries, for marks that may infringe your company’s marks. For example, your company would receive notice that a potentially infringing mark will be published for Opposition, so that your company can then decide whether or not to oppose the application. Even though a favorable decision by the Trademark Trial and Appeal Board will not necessarily block an infringement because a competitor could theoretically continue to use the mark without a federal registration, the Opposition would indicate to a court that your company was conducting an effective policing effort. In addition, the Opposition may lead to a settlement agreement that will resolve the issue in a timely fashion.
Do your homework.
Even if every single factor showing infringement isn’t obvious from the entry of a potentially infringing competitor into a market, the courts expect IP holders to connect the dots. As the court said in the Fitbug case, “While Fitbit was not yet shipping its products, at that time, Fitbit was selling similar devices ‘in the same geographic area under [a] remarkably similar name...’ As a result, a prudent business person should have recognized the likelihood of confusion at that point.” What the plaintiff did: Fitbug argued that it wasn’t responsible for knowledge of a potential infringement until actual sale of the competing products. What your company can do: Pay attention to the results of IP policing efforts even if the competitor isn’t actually selling products or offering services yet, because your company will be charged with awareness of a likelihood of confusion from the time your company knew or should have known of that likelihood—not when your company is completely satisfied that confusion is likely. Seek advice from IP counsel, so that your company doesn’t find itself arguing the equivalent of “The dog ate my homework” before a court if your company does decide to bring a lawsuit.
Look ahead.
Gradual expansion of a competitor into an IP holder’s area of business can sometimes indicate that infringement isn’t ev-
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