Policing your clients’ marks with a §2(d) Watch Service and More
Alex Sandler | February 15, 2022
This article was originally published on August 6, 2020 and republished with updates on February 4, 2022 and on February 15, 2022.
Federal trademark registration provides a trademark owner with the exclusive right to use a brand name, logo, or slogan throughout the United States. However, in order to maintain registration, the trademark owner must enforce their exclusive rights to the mark. Failure to monitor for infringement can negate the hard work required to create and maintain a distinct brand. At the extreme end of enforcement, Facebook, for instance, has aggressively approached this issue and will often oppose marks that contain either “FACE” or “BOOK.” Facebook’s strategy serves to maintain its goodwill and prevent its distinct mark from weakening due to third-party use of similar marks.
Famous marks can be susceptible to dilution when third parties use a similar mark, as third-party use may weaken consumers’ perceptions that a mark is connected to a specific business. In cases of widespread infringement, failure to enforce trademark rights can also lead to genericide—when a mark has weakened to the point that it can no longer represent the source of a good or service but rather the good or service itself. Failure to enforce trademark rights can also harm a business’s reputation, especially if consumers start confusing the business with a competitor that provides lesser quality goods or services.
The USPTO seeks to prevent confusingly similar marks from registering in the first place: examiners issue §2(d) office actions on applications that are confusingly similar to existing marks. However, applicants may overcome these office actions and register potentially infringing trademarks without the trademark owners’ knowledge, even though owners of these trademarks would certainly want to know when applicants receive or even overcome §2(d) office actions relating to their marks.
You can police your marks or your clients’ marks in a number of ways:
Manually search Trademark Electronic Search System (TESS). This would require you to anticipate what sorts of deviations from your clients’ marks filers might attempt to register and search for those deviations to find potentially infringing trademarks. While this process is incredibly manual and tedious, it will inform you about potentially infringing marks, regardless of whether they’ve received a §2(d) office action.
Subscribe to a trademark watch service. A typical trademark monitoring/watch service will notify you once an application that may potentially conflict with one of your marks has been filed. These are often rather pricey, with some options at over $400 per trademark per year. Many trademark watch services will send an alert only once a similar or identical trademark has been approved for publication to minimize the noise of all conflicting filed applications that may not proceed further because of a §2(d) office action. Of course, with this approach, your opportunity to send a letter of protest may be limited.
Subscribe to a §2(d) Likelihood of Confusion watch service. For instance, Alt Legal’s §2(d) Trademark Watch automatically identifies §2(d) office actions. If one of your clients’ marks has been cited in a §2(d) office action as a potential reason to refuse the registration of a filed application, we will notify you. Basically, we’ll warn you if an examiner believes that an applicant’s trademark is confusingly similar to one of your client’s marks, giving you ample time to prepare a letter of protest or otherwise oppose the trademark.
Alt Legal §2(d) Trademark Watch: How it works
Our machine-learning-based algorithm analyzes all USPTO trademark office actions (thousands per day) and automatically classifies these documents by statutory basis for refusal.
If the USPTO issues a §2(d) office action or suspension based on existing registrations or previously-filed applications and cites one of your docketed trademarks or existing applications as possible grounds to refuse a filed application, we will alert you in an email within just a few days. The email will include all of your cited registrations for that particular day, meaning you’ll get a single notification informing you about all of your tracked marks that were cited as a bar for registration. The email will also include all marks previously cited for likelihood of confusion that have now been published for opposition in the Official Gazette.
Additionally, you’ll receive a weekly and monthly recap report of all cited matters. Also, weekly and monthly digests will detail which previously cited marks have been published for opposition in the Official Gazette. In addition to this information specific to your docketed marks, you’ll also receive notification of all USPTO marks cited in reference to §2(d) and all previously-cited marks that have now been published for opposition.
Benefits of Alt Legal’s §2(d) Trademark Watch
Alt Legal’s §2(d) Trademark Watch ties directly into your docket, so all of your docketed trademarks are automatically monitored for citations in §2(d) office actions. This also ensures all notifications are relevant to you as you’re only being alerted about the marks in your docket.
Our system notifies you of conflicting marks so you can have better opportunities to contest filings through letters of protest, cease and desist letters, or even TTAB proceedings. Receiving notice as soon as a docketed mark is cited in a §2(d) refusal helps you submit a timely letter of protest before publication—when it is most effective—or otherwise take enforcement action quickly.
If you want to continue to monitor the application as the conflicting matter makes its way through the application process, you can add the conflicting matter to your docket. Any status changes regarding the applied-for mark will show up in your docket and email notifications. For example, we will notify you if the applicant overcomes the §2(d) refusal and is ready to move forward to publication so that you can plan your next move.
As the only provider that combines docketing with §2(d) watch, we make it easy for you to protect your clients’ marks. Our automated alerts of docketed marks help you track potentially infringing marks through their application lifecycle so you can prepare timely and relevant objections. In addition, as you apply for and register new trademarks for your clients, these marks are automatically added to your §2(d) watch list. All of the information you need to protect your clients’ trademarks is at your fingertips.
Trademark infringement is a widespread issue that often goes unnoticed. This is why it’s so important to utilize a trademark monitoring system to police potential violations and protect your clients’ marks. We’re here to help. If you have any questions or would like to learn more about Alt Legal’s §2(d) Trademark Watch, please schedule a call or get in touch with us through our customer contact form.