Jan 21, 2025 | Trademark Infringers: The Edge-ball Tactic

1 Dishonest individuals and companies may register an existing company’s trademark for their own gain. If they succeed, they can operate in a market close to the company causing customer confusion and negatively impacting their normal operations. Companies need to stay alert to protect their brand and reputation.

2 Someone might try to register a company’s trademark (or a similar logo) for goods and services the company has not registered yet. If the goods being registered by an infringer are very different to what the company sells, then it may not seem worth fighting over. But sneaky people often register marks in product categories that are similar to a company main products. That lets them take advantage of their reputation. This is called the “edge-ball” tactic. If no action is taken, these infringers might start using that trademark for products even more similar to the company’s. This causes confusion to customers, and hurts the company’s brand.

3 To safeguard against these bad actors, the best way is to oppose their trademark registration. Companies can take these actions:

Hire a trademark monitoring service. This is commonly known as a Watch Service. It keeps track of trademark applications. If a trademark similar to the company’s is getting registered, a Watch Service notifies the company so they can file an opposition.
Initiate opposition proceedings. The company should initiate opposition proceedings to block a trademark application that is similar to the company’s brand.
Filling gaps in trademark coverage. A company should consider registering a trademark for goods and service categories that have not been covered yet, especially if they relate to its core business.
4 These strategies are widely applied in jurisdictions across Asia (including China, Taiwan and Korea) and Europe (including the UK and France).

5 These measures are not foolproof. Opposition proceedings might not succeed in jurisdictions where the company has not sold products. Some dishonest infringers might successfully register trademarks in regions for products that are similar to the company’s goods.

6 If someone registers a trademark that looks or sounds similar to a company’s they might start by using it for products that are a little different. This is called “registration of similar trademarks”. Over time, they could start using it on products more like the company’s, which can confuse customers into thinking they’re buying from the real deal. Companies must take actions to stop infringers from committing these acts.

7 Companies could consider taking these actions:
Cancel their trademark. Apply to cancel the infringer’s trademark registration on the grounds of bad faith. Or, that the company has a reputation in the relevant product category.
Cease and desist letters. Send cease and desist letters to online and offline stores that sell products containing the infringing mark.
Legal action. Companies can file lawsuits against infringers that use these similar trademarks on their products.
8 Taking action against infringers discourages future bad actors. Online and offline retailers are less likely to sell products bearing “similar trademarks” if they know that a company is willing to take legal action.

9 Trademark protection requires constant vigilance and proactive legal action.