Trademark monitoring is important when it comes to protecting the value of a mark. No matter whether you have protected a slogan, a brand name, a color, a product shape or even a smell, we need to check it and keep a vigilant eye on events that are happening around us. All we can say that Trademark owners have a duty to police their mark throughout the year and round the clock so that they can protect their brand from any kind of untoward happening.
For businesses, enterprises and companies, the value of marks that are not policed are always in danger and it may cause complete loss of all trademark rights.
No matter whether you are a trademark monitoring service provider or a brand owner there are three important duties that we do while considering a trademark watch and these are as follows:
- Monitoring unauthorized uses of a mark
- Monitoring uses of confusingly similar marks
- Monitoring uses of trademarks by approved trademark licensees
So, how should companies do an Effective trademark monitoring? Here are some steps:
Determine the Territory: Trademark rights are territorial and are generally given on country-to-country basis hence the first step is knowing the territory for conducting a trademark monitoring, means what territory you are going to monitor for a particular trademark. This will depend on where your own rights valid now and what your expansion plans is. Trademarks and Trade-names that we register federally are effective nationwide, while unregistered common law rights are effective in the geographic area of its origin. Trademark rights are also granted on a country-by-country basis wise, so rights in the United States have no effect outside the United States.
Develop a proactive system to learn of misuses: Second step in an overall trademark monitoring process will be to develop a proactive system in place to learn of misuses. Trademark problems are often easier to resolve the earlier they seem, so keeping tab regularly on events is key to success in this domain. Some of the important action plans that trademark monitoring service providers can carry out are:
- Searching USPTO’s online database of federal trademark applications and registrations
- Searching the web periodically for improper uses
- Setting up a Google Alert for your trademark
- Following up on customer complaints
- Taking help from a professional trademark monitoring service provider
- Setting up various third-party online trademark theft reporting process
Evaluate the Substance: The third step in this process is to know substance of the misuse. Once we substantiate the misuse we can then move ahead with the necessary steps to go ahead further. This is the only step where we come to know if the third-party used goods and/or services like ours? Is the territory (geographic location) used will be an issue and/or if the use of no legal concern because it is a permitted fair use?
Decide the actions: There are plenty of measures that we generally take after substantiating the misuse. For example, sending a cease and desist letter to the infringer could be the first step in case a party infringes on your right. If a federal application is pending, you can oppose the application at the USPTO. For uses on the web, the domain name registrar may try to remove improper or infringing content even if the owner or user refuses to. Improper use of a mark in a domain name can often be resolved through streamlined UDRP proceedings.
Enforcing your rights:
This is the last and conclusive step in the overall trademark monitoring process where plaintiff files lawsuit to get the rights enforced.
Sum-up: To sum everything up we can say that trademark monitoring is a continuous and ongoing process and companies should do it throughout the year to avoid being their brand misused.