What is a Trademark Watch Service?
Alt Legal Team | April 01, 2024
This article was originally published on March 17, 2022. It was re-published with updates on April 1, 2024.
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
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
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 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.
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 adopting a monitoring program like Alt Legal Trademark Protection, which 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.
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 Trademark Protection 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 Trademark Protection monitors all of the US marks in your docket by tracking USPTO filings at critical points during the trademark prosecution process and alerting you of potential infringement with plenty of time to develop an enforcement strategy and take action. Alt Legal Trademark Protection provides a low-cost alternative to expensive monitoring services and allows you to provide a base level of monitoring over your entire docket of US marks.
How can I achieve a positive ROI from a trademark monitoring service?
Temark monitoring benefits you as a practitioner because should a client instruct you to take action against a potential conflict, you can generate new revenue for your firm through enforcement work. Sending C&D letters, filing oppositions, letters of protest and more are all enforcement actions that will help deliver a positive return on your investment in your trademark monitoring service. In particuar, because Alt Legal Trademark Protection is so cost-effective product, it is a tool that you proactively utilize even when your clients aren’t paying you to provide monitoring services. If you identify just a few conflicts and you are instructed to complete just 1-2 enforcement actions, you can easily recoup your investment in Alt Legal Trademark Protection. Any additional enforcement work you do is pure profit.
You can also achieve a positive ROI and actually monetize your subscription to Alt Legal Trademark Protection by developing a subscription trademark monitoring plan, allowing you to generate passive revenue for your firm and to offer enforcement work that will bring in additional revenue. Click here to learn more about how to set up a subscription trademark monitoring plan. Many Alt Legal customers are already benefitting from their Alt Legal Trademark Protection subscriptions and realizing additional revenue and profit – read about it here.