Monitoring TrademarksProtect Against Infringement and Maintain Brand Integrity
Alt Legal Team | March 25, 2022
Introduction – Why monitor trademarks?
It’s a competitive marketplace and if you’ve been watching the trends in the USPTO and globally, you know that trademark applications have been on the rise. The USPTO reported in its 2022 Q1 TPAC meeting that FY 2021 closed out with 944,000 classes filed, a 27.5% increase in filings over 2020. 2022 projections are still a 16% increase over 2020 filings. The rise can be attributed to factors like increasing entrepreneurship, government stimuli and subsidies for new businesses, foreign trademark filers, and the growth of online sales during the pandemic. As a result, trademark offices across the globe are seeing record rises in new trademark applications. Currently, the USPTO’s first action pendency rate is 8.3 months which could leave the door open for infringement and delay and hinder your enforcement strategy. As trademark practitioners, this means you need to be extra-vigilant in monitoring your clients’ marks for potential infringement. You want to be certain that nobody out there is filing for the same mark or even similar marks because it can have very harmful consequences. Infringement is often expensive and difficult to fight off. It’s also harmful to a brand’s reputation, and at worst, if permitted, it can result in dilution or genericide. All of these consequences can hinder a brand’s strength and undo all of the goodwill that a brand has worked hard to establish.
Of course, trademark monitoring is important from a client perspective, but it’s also important from your perspective as a practitioner as well because it’s an opportunity for business development. Monitoring itself is a service that you can offer to your clients. When you get monitoring hits, it’s an opportunity to reach out to your client, which is always good for client relations, plus it gives you the chance to offer additional services like enforcement or filing additional trademarks, expanding into new classes of goods and services, or filing trademarks in other jurisdictions. All of this allows you to generate more work for your firm.
How do you monitor trademarks? How do you monitor for trademark infringement?
There are many different types of services that monitor trademarks and monitor for trademark infringement. These services provide different scopes of protection. They monitor trademarks in different jurisdictions and at different points in the trademark prosecution process. The following section discusses traditional types of trademark monitoring services as well as Alt Legal Trademark Protection, which includes Trademark Application Match and §2(d) Trademark Watch, a set of fully-automated monitoring and watch tools.
Global watch services monitor registered trademarks in international jurisdictions. Some companies offer up to 200 jurisdictions, while others will narrow the scope to geographic regions or individual companies. Global watch services generally only monitor for registered trademarks as this information is widely publicly available. Global watch services generally monitor for identical marks and phonetic equivalents in a single class of goods or services. You can monitor for identical marks only in other classes for an additional cost.
US watch services monitor USPTO marks at various stages in the application process. You can choose to watch newly-filed USPTO applications, newly-published marks, and/or newly-registered marks. Companies offer different pricing packages based on which stage(s) you are monitoring. As with global watch services, the US watch services look for identical marks and phonetic equivalents in a single class of goods or services. You can monitor for identical marks only in other classes for an additional cost.
US State Watch
US state watch services monitor trademark registers in US stages and regional jurisdictions. Generally, these services monitor for identical marks and phonetic equivalents in a single class of goods or services.
US Design Watch
US design watch services will monitor a design or logo in the US. These services will generally monitor both newly-filed applications and newly-published registrations.
Domain watch services do not monitor trademark registers, rather, they monitor domain registers. You can choose the scope of domain watch that is relevant based on top level domains, including the new expanded domains, and geographic area.
Online Brand Protection
Online brand protection searches for and also helps with the removal of online infringement. These services look to website content, URLs, streaming video sites, Amazon, international Amazon sites, Ali Baba, Mercado Libre, social media sales, the Google app store, the Apple app store, 3D printing, paid search results on search engines, internet ads, and more. Generally, the types of companies that require this type of service are high end luxury goods companies, jewelry and handbag companies, healthcare companies, etc. or otherwise, companies that have one brand or product that is at risk for counterfeits.
Alt Legal Trademark Protection
Alt Legal Trademark Protection is available as an optional add-on service to Alt Legal IP Docketing Software. Alt Legal Trademark Protection includes Trademark Application Match and §2(d) Trademark Watch, a set of fully-automated monitoring and watch tools that you can use seamlessly with your Alt Legal IP Docketing software to provide you with an integrated docketing and full US-docket monitoring experience.
Trademark Application Match and §2(d) Trademark Watch track USPTO filings at critical points during the trademark prosecution process, alerting you of potential infringement with plenty of time to develop an enforcement strategy and take action. These tools provide a low-cost alternative to expensive monitoring services and allow you to provide a base level of monitoring over your entire docket of US marks.
- Trademark Application Match scans all newly-filed USPTO applications using a proprietary algorithm to identify marks that have identical or significantly overlapping literal elements with the US marks in your docket. You’ll receive a weekly report of all Trademark Application Match findings so that you can quickly scan and determine if any action should be taken.
- §2(d) Trademark Watch works by monitoring all of the US marks in your docket and notifying you whenever any of your marks are cited in an office action, refusing the applied-for mark based on §2(d) likelihood of confusion with the mark in your docket. With §2(d) Trademark Watch, the trademark examiner has already done the work for you of identifying a confusingly similar mark. With this information, you’ll have plenty of time to notify your clients or stakeholders and prepare an enforcement strategy.
What is a trademark watch notice?
A trademark watch notice is a type of notification that the trademark owner or trademark counsel will receive if they have signed up for a trademark monitoring service or a trademark watch service and the service has flagged a confusingly similar mark. Depending on the type of monitoring or watch service that has been purchased, the trademark watch notice may be identifying a new trademark application, a newly-published mark, or a newly-registered mark, that the service has identified as potentially confusingly similar to your client’s trademark based on criteria that you provided. The trademark watch notice may identify marks in any combination of the following, depending on the search type that you’ve purchased:
- Identical marks
- The same or similar marks
- The same class of goods/services
- Related classes of goods/services
If you have Alt Legal’s §2(d) Trademark Watch, the trademark watch notice provides notice that an examining attorney has cited your client’s mark as a source of likelihood of confusion with a newly-filed application. In other words, the examining attorney is refusing a newly-filed application on the basis of §2(d) likelihood of confusion with your client’s mark, and Alt Legal is letting you know that your client’s mark has been cited. The examining attorney has done the work for you of performing a likelihood of confusion analysis so right away, you know that the citation is relevant and likely a legitimate concern when it comes to infringement of your client’s mark. The USPTO does not notify trademark owners if their mark has been cited as the source of likelihood of confusion, so Alt Legal’s §2(d) Trademark Watch provides a completely novel type of trademark watch notice. It can be very helpful to identify potential infringement at this stage in the examination process because you are seeing a mark that the examining attorney has already identified as confusingly similar, and you have plenty of time to develop an opposition strategy, including filing a pre-publication Letter of Protest, which the USPTO has claimed is more likely to be accepted as opposed to a post-publication Letter of Protest.
What is a trademark notice of publication?
In the United States, after a trademark application has been fully examined and satisfied all of the examiner’s requirements, the applied-for mark will be published for opposition in the Official Gazette. When the applied-for mark is approved for publication, the examining attorney will issue a Notice of Publication, indicating the date on which the applied-for mark will be published for opposition in the Official Gazette. The publication date is relevant because it triggers the start of the 30-day opposition period in which another party may file a Notice of Opposition, objecting to registration of the mark, or else file an extension of time to file an opposition. Trademark counsel must keep track of the publication date as well as the close of the 30-day opposition period and monitor for any opposition filings or extensions of time to oppose.