Trademark Monitoring

Monitoring Services To Protect Your Registered Trademarks

Trademark owners have the primary responsibility of protecting their trademarks and ensuring that they are not infringed upon. Here are the primary duties of trademark owners:

• Monitoring the Marketplace: The trademark owner should consistently watch the market to detect if other businesses are using a trademark that is confusingly similar to theirs. Each of our clients that hold federal trademark registration may set-up a trademark monitoring program with our firm where we will conduct quarterly state and federal trademark searches to identify any potentially conflicting or infringing applied-for trademarks.
• Investigate Potential Infringements: If a potentially conflicting or infringing use is identified, the trademark owner should investigate it further to confirm whether it is indeed infringement. Factors like the similarity of the trademarks, the relatedness of the goods or services, and the likelihood of confusion would be considered.
• Opposing Registration of Similar Trademarks: If a similar trademark is being registered, the trademark owner can oppose the registration during the opposition period, a specific time frame set by the trademark office after a trademark has been approved for publication. This would be done through the Trademark Trial and Appeal Board of the USPTO.
• Enforcing the Trademark Rights: In case of confirmed infringement, the trademark owner should enforce their rights. This usually involves first sending a cease-and-desist letter to the infringer, asking them to stop using the similar trademark. If this does not work, the trademark owner might have to take legal action, such as filing a lawsuit in federal court for trademark infringement.
• Maintain Rights by Using the Trademark: A trademark owner must actively use the trademark in commerce to maintain its registration. Failure to do so could lead to loss of rights over the trademark.
• Renewing the Trademark Registration: A trademark owner is also responsible for renewing their trademark registration before it expires. If the registration is not renewed, the trademark could be considered abandoned and others may have the opportunity to register it.

What Is Involved In Our Trademark Monitoring Programs

Generally, the trademark monitoring program offered by our law firm involves a comprehensive set of services to ensure robust protection of a client’s trademark rights. These services often commence with a thorough understanding of the client’s brand portfolio and the scope of their trademark rights.

One key aspect of a monitoring program is to constantly observe the market and trademark filings for potential infringements. This may include tracking new trademark registrations and applications for trademarks that are identical or similar to the client’s trademarks. Our firm make use of Corsearch’s advanced technologies to identify potential trademark conflicts across multiple jurisdictions.

When potential infringements are detected, our law firm carries out a detailed analysis to evaluate the severity of the threat and possible courses of action. This involves considering the jurisdiction, the similarity of the trademarks, the relatedness of the goods or services, and the potential for consumer confusion.

Following this, our law firm will advise on the best course of action, which could range from negotiation and settlement to opposition proceedings or litigation. A key step in this process is often the drafting and sending of cease-and-desist letters to alleged infringers.

Lastly, our trademark monitoring programs provide assistance with maintaining the trademark registration, which includes using the trademark in commerce and ensuring the trademark’s timely renewal. Our law firm may also guide the client in expanding their trademark portfolio as the business grows and enters new markets.

All in all, our trademark monitoring programs were created to protect a client’s brand and reputation from potential infringers and to maintain the exclusivity and strength of their trademarks in the marketplace.

Will the USPTO Refuse Registration of Identical or Confusingly Similar Marks?

While the USPTO does conduct its own examination of trademark applications and can refuse registration of a trademark that is identical or confusingly similar to an existing registered trademark, it’s important for trademark owners to understand that the USPTO’s processes aren’t infallible. Sometimes, potential conflicts might be overlooked, especially if the trademarks or goods and services aren’t identical but are still potentially confusing.

Furthermore, the USPTO does not monitor the marketplace for trademark infringement—meaning, it does not police the use of registered trademarks in commerce. A trademark owner has the responsibility to enforce their own trademark rights.

Therefore, even though the USPTO does some vetting, it’s generally recommended for a trademark owner, especially those with valuable or widely used marks, to engage our law firm to provide trademark monitoring services. These services can help identify potential infringements in the marketplace and in newly filed trademark applications, ensuring more robust protection for the trademark.

As noted above, the owner of a trademark has the primary responsibility to enforce their trademark rights. If a potentially conflicting rademark is being used or applied for, it’s the trademark owner’s duty to take action to protect their trademark rights. So, employing our law firm to provide monitoring service can be a prudent move to safeguard these rights.

What is the Cost of Our Trademark Monitoring Services?

Trademark monitoring services provided by our law firm can vary in cost, depending on the complexity of the trademark(s) and the range of goods or services the trademark(s) covers.  That said, generally our law firm charges $275 per quarter for a maximum of two trademarks in two trademark classes.  If a trademark owner has more than two trademarks in its portfolio, our fees will increase accordingly.  Please feel free to reach out to us for a quote.  We make every effort to all inquires within one business day.

Keep in mind that these costs typically do not include any action that might need to be taken if a potential conflict is found. Services such as sending cease-and-desist letters, filing oppositions with the USPTO, or initiating litigation would generally be billed separately, often on a flat-fee or hourly basis.