By: Jonathan H. Love and Mitchell D. Lange
A company’s brands can be amongst its most valuable assets and brand owners must be proactive about protecting them. Trademark registration is a critical first step. But brand protection should not end there. Brand owners should implement a protection strategy that includes a plan for continuously monitoring the marketplace for infringement or misuse of trademarks. The benefits of a trademark watch strategy include the following:
1. Protection of Brand Identity and Reputation An effective trademark watch will monitor newly filed trademark applications, domain names, company names and other potential uses of similar or identical trademarks that could pose a risk to a brand owner's intellectual property rights. Consistent monitoring ensures protection for the brand’s identity and reputation. Infringements or unauthorized use of similar trademarks can confuse consumers, dilute the brand’s distinctiveness and harm its reputation. In some cases, the failure to watch and enforce a trademark can lead to a loss of rights in that mark. A trademark watch strategy helps brand owners maintain the uniqueness and integrity of their brand, ensuring that their brand identity remains strong and uncontested in the market.
2. Early Detection of Infringement A trademark watch helps in the early detection of potential infringements. By monitoring newly filed trademarks, domain names and other relevant IP registrations, a watch program alerts the brand owner when a confusingly similar mark is filed by another entity. Early detection allows the brand owner to take timely legal action, such as filing a letter of protest, initiating an opposition action or sending a cease-and-desist letter, which can prevent unauthorized use of the brand. For example, a letter of protest can be a very effective tool for challenging trademark applications for confusingly similar marks. But a letter of protest should be submitted to the United States Patent and Trademark Office (USPTO) before an application is published. A letter of protest filed after publication and after the 30-day opposition period is too late and the USPTO will typically disregard it. An effective watch strategy can identify problematic applications early and help a trademark owner address them.
3. Cost-Effective Risk Management An ounce of prevention is worth a pound of cure. Addressing trademark issues proactively through a watch program is more cost-effective than dealing with the consequences of trademark infringement later. Legal battles, rebranding efforts and loss of consumer trust can be far more expensive and damaging than the cost of a trademark watch service. By staying informed and taking early action, brand owners can mitigate risks and avoid costly legal disputes.
While we have highlighted some key reasons for implementing a trademark watch strategy, there are other benefits of actively monitoring your brands, some of which extend beyond the realm of brand protection. For example, a trademark watch that monitors new trademark applications can also provide valuable insight into market trends and competitor strategies.
Trademark monitoring strategies can take many different forms with varying degrees of complexity, from a more basic and passive watch to a comprehensive approach. Monitoring can be performed manually or automated through software. It can be limited to the United States or the USPTO or expand worldwide and include trademark registries in other countries or jurisdictions. Watch strategies can also be crafted to monitor specific industries, keywords or phrases and designs. Brand owners should implement a strategy with unique parameters to fit their needs.
Parsons’ trademark attorneys are well versed in brand monitoring strategies. From startups to multinational corporations, clients trust us with all aspects of domestic and international brand development, management and protection. Contact us if you have any questions or would like more information about how we can help build and protect your brands.
Jonathan H. Love is a shareholder in Parsons Behle & Latimer’s intellectual property practice. His practice spans intellectual property, antitrust and competition and litigation, and his experience crosses numerous industries, including retail and consumer products, apparel, construction, nutritional and dietary supplements, dental and healthcare, food and beverages, agribusiness, software, semiconductors, higher education, social media, entertainment, outdoor recreation and emerging technology. To contact Jon, call (801) 532.1234 or send an email to jlove@parsonsbehle.com.
Mitchell D. Lange is a 2L intern in Parsons’ Summer Associate program.
