How to Set Up a §2(d) Citation Watch
Alt Legal Team | March 13, 2023
Over 1,000 law firms are monitoring §2(d) citations to spot potential infringement – are you?
Monitoring §2(d) citations is a relatively new and innovative way to discover potential infringement. It is a departure from traditional watch and monitoring services that look to newly-filed applications, published applications, and registered marks. A §2(d) citation watch service like Alt Legal’s §2(d) Trademark Watch identifies potential infringement when examiners issue office actions refusing an application based on §2(d) likelihood of confusion. When examiners issue these types of office actions, the examiner only notifies the new trademark applicant; they never notify the owner or applicant of the mark that has been cited. This means you may never know that someone applied to register a mark that may infringe your client’s trademarks.
§2(d) citation watch services, like Alt Legal’s §2(d) Trademark Watch, solve this problem, sending you email notifications any time one of the marks in your docket is cited in an office action referencing §2(d). Some providers, like Alt Legal, will also let you know if any mark previously refused for likelihood of confusion proceeds to publication in the Official Gazette.
The advantage of a §2(d) citation watch, or a §2(d) trademark watch, is that you learn of potentially infringing marks at a very early stage in the trademark application process. This gives you the ability to vigorously protect your clients’ trademark rights and demonstrate the additional value you provide. Any time you can proactively reach out to a client about potential infringement, it’s an excellent opportunity to strengthen client relationships and potentially even secure more business for your firm. It shows your clients that you are paying attention to them, actively monitoring their valuable IP, and proactively developing strategies to overcome potential infringement. Clients appreciate when their attorneys are looking out for them and can show expertise in dealing with complex processes before the USPTO.
So, how can you set up a §2(d) citation watch service? Here are some key steps that you’ll need to take:
Subscribe to a §2(d) citation watch service like Alt Legal §2(d) Trademark Watch.
Alt Legal is one of the premier §2(d) likelihood of confusion watch vendors with our §2(d) Trademark Watch tool. §2(d) Trademark Watch will monitor all USPTO marks in your docket for §2(d) office action citations for one low fee. You can purchase a subscription to §2(d) Trademark Watch or you can purchase a subscription to Alt Legal Trademark Protection, which includes §2(d) Trademark Watch plus Trademark Application Match, our innovative monitoring tool that monitors your entire USPTO docket against newly-filed trademark applications, identifying identical or significantly overlapping literal elements. Alt Legal Trademark Protection tracks USPTO filings at critical points during the trademark prosecution process and alerts you of potential infringement with plenty of time to develop an enforcement strategy and take action. It provides a cost-effective alternative to expensive monitoring services and allows you to deliver a base level of monitoring over your entire docket of US marks.
Determine when you’ll receive notices.
Check with your §2(d) citation watch vendor to determine when you’ll receive §2(d) watch notices. Alt Legal §2(d) Trademark Watch sends daily emails with direct links to the relevant office action, the confusingly similar application, and your cited matter in the TSDR. Alt Legal also provides weekly emails and monthly reports of all your cited matters and related published matters. Additionally, weekly and monthly reports will include all USPTO marks cited in reference to §2(d) and all previously-cited marks that have now been published for opposition.
Develop a workflow around reviewing §2(d) citation watch notices.
It shouldn’t take too much time to review a citation, but depending on the frequency and volume of watch notices that you receive, you may want to delegate the initial review to your support staff. Here are the steps you’ll need to take when reviewing §2(d) trademark watch notices:
- Read the office action in question and verify that your client’s mark is the source of likelihood of confusion. Sometimes, examiners mistype serial numbers and may inadvertently enter a serial number for one of your marks. If this happens, you can simply ignore the §2(d) watch notice.
- Perform initial research to assess the situation using the §2(d) likelihood of confusion watch notice, along with links to the office action, the cited application, and your cited matter in TSDR, as well as a cursory internet search to determine whether the §2(d) citation is worth passing along with some preliminary information to the client.
- Contact your clients and/or colleagues and inform them of your findings. Ask for instructions as to whether or not they’d like you to proceed with conducting additional research and presenting an enforcement strategy. When you inform your clients and/or colleagues, you can send the user-friendly report from Alt Legal along with this sample language:
“I received notice from one of our service providers of ABC company’s application to register the mark X, and think this may be of interest in view of your trademark rights in mark Y. With your permission, I can conduct additional analysis into this potential risk and provide a report with options for proceeding.”
Does your client want you to proceed with additional research? We’ve created a detailed research guide and outlined different enforcement strategies that you can pursue: How to Use Alt Legal’s Section 2(d) Trademark Watch Service to Generate New Business and Impress Your Clients
Setting up a §2(d) citation watch service like Alt Legal’s §2(d) Trademark Watch is beneficial for your clients because it helps to identify infringement that you might have ordinarily missed as the USPTO does not notify the owners of cited marks that an office action has been issued. A §2(d) trademark watch service also affords you the ability to reach out to clients, let them know that you’re looking out for them, and potentially bring in more business via an enforcement proceeding. It’s a win-win for everyone involved.
Learn more about the benefits of a §2(d) likelihood of confusion watch service like Alt Legal’s §2(d) Trademark Watch:
- How to Use Alt Legal’s Section 2(d) Trademark Watch Service to Generate New Business and Impress Your Clients
- Monetizing Alt Legal’s §2(d) Trademark Watch+ Tips to Help you Build More Business
- Alt Legal Webinar: 2(D)iscover Potential Infringement: Using Alt Legal’s §2(d) Watch Effectively
- Creating Passive, Subscription Revenue for your Trademark Practice with Alt Legal Trademark Protection
- Alt Legal Webinar: Watch Your Revenue Grow: Monetizing Alt Legal’s Trademark Protection Service
If you have any questions about how to choose the best IP docketing software and/or monitoring and watch service for your organization, our knowledgeable team is here to help. Reach out to us at firstname.lastname@example.org. Also, we would be pleased to offer you a free trial or demo Alt Legal Trademark Protection, which includes §2(d) Trademark Watch and Trademark Application Match. To sign up, click here.