Trademark monitoring is important for keeping an eye on the marketplace and knowing when to enforce earned trademark rights against third parties.
Trademark owners need to monitor their trademarks to ensure no third party is infringing their rights. In particular, it is important companies monitor the most important trademarks they own, such as their company name or best selling products.
Trademark owners need to monitor the United States Patent and Trademark Office (USPTO) trademark registry and trademarks at common law. There are several reasons why trademark monitoring is important.
Why Trademark Monitoring is Important
When a trademark owner does not enforce their trademark rights, they risk the field becoming “crowded” with the same or similar trademarks. If the field becomes too crowded, a trademark owner cannot effectively enforce their trademark rights, even if they have a registered trademark. That is why it is important to conduct periodic trademark searches.
In order to enforce trademark rights, companies need to monitor if other companies are using similar trademarks in the marketplace or if any third parties applied for the same or a similar trademark for registration with the USPTO. Trademark monitoring is the first step to enforcing trademark rights.
USPTO Trademark Monitoring
The first important place to monitor any trademark infringement, or potential infringement, is by monitoring new application filings at the USPTO. Every week, the USPTO publishes the Official Gazette, which lets trademark owners know what trademark applications have been approved for registration.
Official Gazette as seen online
Trademark applications published in the Official Gazette state when the thirty day period to file an “Opposition” takes place. Oppositions are the only way a trademark owner can stop an trademark application they believe will harm them from becoming a registration. Learn more about filing trademark Oppositions here.
Rather than rely on the Official Gazette it is best for trademark owners to monitor their trademarks proactively by either hiring a trademark watch service, or searching the USPTO database once a month to get a possible problem application on their radar before it is published in the Official Gazette. If a trademark owner misses the thirty day window to file an opposition, they can only file a Cancellation after the trademark registers. Cancellations are harder to win, so it is important to not miss the thirty day opposition period.
Marketplace Trademark Monitoring
In addition to monitoring the USPTO trademark registry for any new trademark applications that infringe a trademark owners rights, it is also important to keep an eye in the marketplace. A company can gain trademark rights by merely using a trademark. At some point, it will be extremely difficult to stop a company from using a trademark, even if infringement is clear, because they can claim “laches” as a defense to infringement. Laches is the legal term that basically means, you waited to long to bring an action, so it is not a big deal to you anyways.
The best way to monitor the relevant industry is to monitor industry news via trade magazines or blogs, keep an eye out for anything that may be an issue, and periodically conduct Google and social media searches.
If you need someone to monitor your trademarks, but do not think it would fit within your budget, contact Granite Trademark Services for a free trademark consultation. Our expert trademark monitoring services may be less expensive than you imagine and consist of detailed quarterly reports.