Maintain the Strength of a Trademark: Police It!

Nov 29, 2019 | Best Protection Practices, The Importance of Trademark Watching, Trademarks

So your company has strong trademarks and they are covered by federal registrations. You no longer have to worry about protecting them, right? Wrong.
As the owner of a federal trademark registration, protecting your trademark from infringers is much easier and much less expensive. (See my post, Benefit from the Power and Efficiency of a Trademark Registration, for the specific advantages of a federal registration when dealing with trademark infringement.) Additionally, the United States Patent and Trademark Office will provide some protection for your trademarks by denying registration for marks that the trademark office finds confusingly similar to yours.

Owners of Trademark Registrations Bear Ultimate Responsibility to Protect the Brand

However, it is up to the trademark owner (with or without a trademark registration) to protect its marks. In trademark law jargon, a trademark owner should “watch” or “monitor” its marks.

So, how do you know if a competitor is using your mark? On their own, trademark owners often discover the use of confusingly similar marks by competitors in multiple ways. Sometimes, customers ask them if another company is affiliated with the trademark owner when they aren’t. Others have tried to register a domain name including their trademark only to find a competitor already took it. Still others have had products returned to them based on the customer’s mistaken belief that the product came from the client.

Trademark Attorneys Watch Marks for Clients

However, even though clients often uncover infringement of their mark on their own, it’s best to catch the infringement or potential infringement as early as possible. As such, the savvy client has its trademark attorney watch its marks for them. Trademark attorneys utilize outside agencies to monitor trademark office filings for marks similar to the client’s mark. Most of these outside agencies are overbroad with the marks they flag. Your trademark attorney can cull these filings and forward only those that may present a problem.

At the client’s direction, the trademark attorney might then send a cease and desist letter to the applicant informing it that his or her client has greater rights to the mark at issue. Since trademark watches notices monitor new filings, the applicants are often in the early stages of development of their company or product. Thus, the applicant may be more willing to change its name, logo, slogan, etc. upon receiving a cease and desist letter which makes the process less costly for the client/trademark owner.

The Weakness Created by not Watching a Mark Could be Fatal

If competitors use or receive registrations for marks confusingly similar to your own, this could weaken your company’s mark and prevent your company from stopping a competitor’s use of a confusingly similar mark.

Consequently, if your company then sued an infringer for trademark infringement, your registration may not hold the weight it once did. If an infringer can cite several registrations or several other uses of your mark for similar services or goods, your company might lack the strength to protect its exclusive use of its mark and stop such infringer.

Therefore, have your attorney police your mark and continue to protect it. There are other ways your company’s mark may lose its strength so stay tuned for more helpful advice.