Trademark monitoring is an essential part of protecting trademark rights. The United States Patent and Trademark Office (USPTO) grants you certain rights following trademark registration. Unfortunately, this doesn’t always stop dishonest or negligent use of your brand in the form of trademark infringement.
Why is Trademark Monitoring Important?
A failure to police your trademark can lead to a loss of rights. For example, if widespread use of your trademark occurs without your consent, an infringer can argue that you no longer have trademark rights because consumers no longer associate the brand with your business.
While the government does grant trademark protection, they do not police potential violations. This means the onus of protecting your trademark falls on you. Trademark monitoring provides the opportunity to catch trademark infringement and misuse early on and end it before litigation is necessary.
Our experience is the sooner that an infringer is contacted about an infringement, the chances of success go way up and the costs go way down. Conversely, if an infringement goes on for a period of years, it is much more difficult and costly to stop the infringing activity.
Studies have found that more than 80 percent of companies experience trademark infringement. The number one way to stop an infringement in its tracks is to set up trademark monitoring including google alerts and a trademark watch.
Trademark Watch Service
There are a variety of third-party firms that provide monitoring of your trademark at the trademark office. A typical trademark watch will notify you whenever a trademark similar to yours is filed or published for opposition in the Official Gazette. Publication in the Official Gazette is extremely important because it starts a 30 day deadline to file a trademark opposition. Without a trademark watch, you won’t know the deadline even exists. If trademarks similar to yours register, it will weaken your trademark.
In addition to a professional trademark watch service, these tools can help with your trademark monitoring:
- Google Alerts: For all important trademarks it is highly recommended to set up Google Alerts to send notifications whenever your trademark is used online.
- Google Search: Apart from alerts periodically searching your trademark to be sure that no infringements appear is a very good idea.
- Amazon Search: If you sell products, periodic searches on Amazon is also recommended.
Stopping Infringement in During the Application Process
If you identify a confusingly similar trademark that’s been registered or is in the process of being registered, you can stop the process through the USPTO. When the application is filed, you can file a Letter of Protest. If the trademark application is approved and publishes in the Official Gazette, you can file a Notice of Opposition. The infringing party then has 40 days to file an answer. If they fail to do so, their requested trademark will not register.
If an answer is filed, however, the matter will proceed similar to litigation. Instead of federal court, though, hearings will take place through the Trademark Trial and Appeal Board. There are about 6000 oppositions filed each year and generally trademark infringement is on the rise.
If you missed the opposition deadline and an infringing trademark is granted to another company, there are still options outside of litigation. Filing a trademark cancellation can result in an approved trademark being invalidated. You can do this under almost all grounds up to five years after registration has been granted, and then on more limited grounds thereafter, so trademark monitoring should be done even if you’ve gone years without it.
If an infringing trademark is registered for five years, it becomes more difficult to cancel it. The USPTO or a court of law may view a lack of action on your part as unreasonable. Because of this, you should immediately respond to all instances of infringement.
Trademark Monitoring Service
Due to how time-consuming policing infringement can be, many businesses choose to utilize a trademark monitoring service. These third-party firms are typically experienced in how to look for potential violations. Many also use the latest technology to search extensive databases for trademark infringement.
Exercise caution when hiring a trademark monitoring service, and always choose a reputable firm. You should typically disqualify any company that has been flagged by the USPTO as a scam. The Misleading Offers and Notices page lists dozens of potentially fraudulent companies, and many have names that imply they are an official government monitoring office. Since the USPTO doesn’t police trademark infringement, though, it’s obvious that these names are misleading.
We utilize one of the most prominent trademark watch providers and we are able to pass along a 20% discount to our clients due to the volume of watching that we do. The annual fee from our vendor is in the $400-$500 range.
Trademark Cease and Desist Letters
Trademark owners have many tools at their disposal, but few are as useful as the trademark cease and desist letter. Some IP owners informally call or send an email to infringers letting them know they’re misusing a trademark. For a number of reasons, we generally recommend that the letter come from a trademark attorney that litigates.
These letters put infringers on notice that they’re violating trademark laws, and they include a demand that those actions stop immediately. These notices are so effective that they’re partially credited with keeping over 97 percent of disputes out of the court system. For a trademark cease and desist letter to carry legal weight, however, it must include the following:
- A demand that trademark infringement end (i.e. cease).
- A demand that infringement not be resumed (i.e. desist).
- A summary of the infringement.
- A deadline for a response (usually about 10 days).
When sending a trademark cease and desist letter, it’s also important to use the proper delivery method. We typically email the letter as a PDF and request for immediately confirmation of receipt. If receipt is not confirmed, we FedEx the letter. These are additional important steps that ensure an infringer cannot later claim they were unaware of their misuse.
Trademark Monitoring Software
Trademark infringement is such a prevalent issue that it can be difficult to monitor all violations. The trademark monitoring service that we use utilizes monitoring software to find confusingly similar trademarks. The effectiveness of this type of software has even led the World Intellectual Property Organization (WIPO) to suggest its use. The technology is far more adept at policing potential violations than any manual monitoring service. Law firms and third-party providers that utilize this software can then send out cease and desist letters after being notified of infringement.
Although trademark monitoring isn’t mandated by the USPTO, a failure to monitor your trademark can have serious consequences. If your trademark is important, a trademark watch should be set up as soon as possible. Even minor delays – including those that don’t result in abandonment – could result in large economic losses for your company.
At Mandour & Associates, we recognize that your brand is extremely valuable and that is why we recommend trademark monitoring. If you have questions or wish to set up a watch, contact us today.