What is a Trademark Watch Service?
Alt Legal Team | March 17, 2022
Trademark monitoring services (or trademark watch services) are an important part of trademark ownership. These types of services help you to identify potential infringement by tracking various types of trademark filings and locating identical and/or similar marks, based upon criteria that you’ve selected. Read more to learn about trademark watch services and trademark monitoring services, how much these services cost, and how to choose the right type of monitoring service.
What is a trademark watch service?
Trademark monitoring services or trademark watch services search trademark registers for potential trademark infringement of your client’s trademarks. There are a variety of ways to watch for infringement and you’ll need to select a service that offers the scope of monitoring that serves your client’s needs. But generally speaking, trademark watch services monitor trademark registers in a particular jurisdiction and look for newly-filed applications, newly-published marks, and/or registered marks that are the same or similar to your client’s mark in the same class of goods/services. You may also elect to monitor the mark in additional classes of goods/services. Trademark watch services notify you any time a mark appears that meets your particular criteria, allowing you to assess the situation and take action to stop potential infringement if warranted.
How much does a trademark watch service cost?
Two of the more established vendors for trademark monitoring services include Corsearch and Clarivate. Another vendor in this space is Markify, a newer company which has been around since 2010 and offers alternative pricing models at a lower cost. There’s a lot of price variance and you have to figure out what’s right for you and your client. There are many different types of trademark monitoring services out on the market. The type of service that you ultimately select generally depends on what your client’s needs are and what their budget is. A few types of watch services include:
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 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.
Alt Legal’s §2(d) Trademark Watch
Alt Legal’s §2(d) Trademark Watch is a novel approach to monitoring trademarks. When an examining attorney issues an office action refusing an applied-for mark based on §2(d) likelihood of confusion with a prior-filed mark or registration, the owner of the cited mark never receives notification from the USPTO that their mark was cited in an office action as basis for refusing a new application. §2(d) Trademark Watch alerts trademark owners when their marks have been cited in office actions citing §2(d) likelihood of confusion. This alerts trademark owners of potential infringement early on in the trademark application process and allows them to take action like filing a pre-publication Letter of Protest or pursue other opposition strategies. §2(d) Trademark Watch doesn’t just watch a single mark or a limited class of goods/services; it monitors your entire docket and serves as a low-cost blanket trademark monitoring service.
How do you decide on a trademark watch service?
First, you’ll need to consider what level of protection your client is looking for. Consider the geographic scope of monitoring that you are interested in pursuing. Are you looking to monitor registers in the United States or internationally? Perhaps you are only concerned with monitoring in particular foreign jurisdictions or regions. Also, consider the types of marks you are concerned with policing. Depending on when you want to be informed about infringement, you can consider a watch service that monitors newly-filed applications, newly-published marks, or registered marks. You might also be considering a monitoring service like Alt Legal’s §2(d) Trademark Watch that monitors office actions where examiners refuse the application based on §2(d) likelihood of confusion, citing your client’s prior-filed application or registered mark. Learning of potential infringement at different stages in the trademark prosecution process allows for different options in terms of developing an opposition strategy.
Taking the above factors into consideration, you also need to be mindful of your client’s budget. Many trademark monitoring services and trademark watch services are expensive and what service your client ultimately chooses is largely based on what they can afford to spend and what they are willing to invest in trademark monitoring. A significant benefit of a monitoring service like Alt Legal’s §2(d) Trademark Watch is that it is a low-cost service and cost does not multiply with the addition of new marks or new classes or goods/services. Alt Legal’s §2(d) Trademark Watch takes a totally different approach to trademark monitoring, only looking at references to the client’s mark in office actions citing §2(d) likelihood of confusion with reference to the mark.