Trademark Policing: Your Trademark May Be At Risk
by Tara Vitale
You’ve built your company and business around your name and logo. Your brand has a great reputation and you’ve decided to protect it by applying for a trademark. After investing financially in legal costs and a filing fee, you have received a valuable asset: your trademark registration. However, once you have received your trademark registration, you need to protect it.
Within trademark law, part of maintaining your trademark rights requires that you police against unauthorized use of confusingly similar marks and actively enforce your rights if infringement occurs.
So, if you do find that someone has infringed on your trademark, you can’t delay in asserting your rights or you may lose them! The most cost-efficient and cost-effective method of protection is early detection.
There are 2 main ways to police your trademark. First, start in-house with your company and employees. You should educate employees on the proper use of your trademark with stylesheets or brand guidelines, which are company guidelines on how trademarks should be used in materials or advertising. Employees are a great resource for spotting potential infringements because they are interacting with clients and competitors, reviewing industry material, and appearing at networking events. Encourage your employees to report infringement to you whenever they encounter it.
Second, subscribe to a trademark policing service or use man-hours to do the searches yourself. Depending on the jurisdictional scope of trademark (state, federal, or common law), where you search for infringement may vary. For example, if you have a federal mark registered with the USPTO, you have a duty to police nationwide for infringement. The following searches and policies can help:
(1) Search the web, social media, and apps for infringement;
(2) Monitor the USPTO’s official gazette for trademark applications;
(3) Monitor the USPTO’s TESS Database for registrations;
(4) Use Google Alerts for monitoring;
(5) Have a trademark theft reporting process where 3rd parties can report infringement; and
(6) Follow up on customer complaints that might indicate another company or brand is being confused for your business.
If you find any potential infringements you will then have to determine if any activity is problematic enough to act on. You should consider the following factors when reviewing potential infringements:
- Which party was using the mark first;
- The similarity between the marks;
- The similarity of the products or services associated with the marks;
- If there is actual evidence of confusion between the marks;
- The degree of care used by the consumers when purchasing the goods or services; and
- The other party’s intent in choosing the mark.
The alternative to searching yourself is to hire a trademark policing service, such as the one Apex offers. Apex provides a comprehensive trademark policing service that runs searches twice a month and prioritizes potential infringements in a memo giving you an update on your trademark’s standing.
The article provided above is for general information purposes only and should not be relied on as specific legal advice. This article does not form an attorney-client relationship. If you have any questions or would like to hear more about how Apex can help you protect your company’s trademark, please contact Tara M. Lukjan at firstname.lastname@example.org.
July 7, 2020