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Matthew McLaughlin

Monitoring Your Trademarks

We have assisted hundreds of clients in navigating the nuances of federal and state trademark registration and protection. One of the most common misunderstandings about trademarks is a registrant’s obligations after they have registered a trademark with the United States Patent and Trademark Office.

The USPTO grants a trademark registrant considerable rights following registration, but the USPTO does not monitor or police the mark for potential infringement. That obligation falls squarely on the registrant.

Trademark monitoring provides the owner of a registered mark the opportunity to catch infringement and misuse early, mitigating the likelihood of costly litigation. Our experience is the sooner an infringer is contacted about the infringement, the chances of preventing further use increase, and the costs of dealing with the infringement decrease.

Conversely, if infringement persists for a period of years, the cost of dealing with the situation increases significantly and the owner of the registered mark may actually lose the ability to enforce the rights granted by the USPTO through registration.

It is estimated that 80% of businesses experience trademark infringement of some sort, so it is critically important that a registrant monitor its registered trademarks. 

We help clients with monitoring best practices and advise clients on appropriate enforcement actions should there be a case of potential infringement; but we also suggest three simple steps for clients to implement on their own to monitor their trademarks:

1. Start with an online Google search.

One of the easiest and most productive steps that a trademark registrant can perform in order to monitor potential infringement is to run a simple Google search. Quite simply, start by typing your trademark into the search box and analyze the results. It is important to look not only at potential uses on websites but “image” uses as well in order to cast the widest possible net for potential infringement. 

In addition, it is generally advisable to search industry-specific websites. For example, we represent hundreds of breweries, and one of the best places to search for potential infringement is on Untappd, a beer consumer-focused website that allows people to check in beers they have enjoyed based on beer name, style, and brewery.

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2. Set up Google alerts for the registered trademark.

Another simple monitoring strategy is to set up Google alerts for your trademarks. Setting up a Google alert is a cost-effective way to scrape the web and be alerted of potential situations of infringement.

With our brewery clients, we advise setting up a separate email address for Google alerts. This ensures that all evidence of potential infringement is housed in one location. 

Typically, we will help clients assess the risk of the captured evidence to determine whether any enforcement action is necessary, but setting up Google alerts is an efficient way our clients can take ownership of their trademark monitoring obligation.

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3. Search the USPTO’s Official Gazette for potentially infringing marks that have been published for opposition.

Finally, we recommend our clients search the UPSTO Trademark Official Gazette a couple of times a month. The USPTO Trademark Official Gazette is published every Tuesday, which means a new round of potentially registrable marks are published for anyone to review and determine whether any of the published marks infringe upon already existing marks.

At this point in the trademark registration process, if someone finds a mark published on the Official Gazette that potentially infringes on their senior mark, the recourse is commencing an Opposition Proceeding before the Trademark Trial and Appeal Board of the USPTO. Opposition proceedings can be costly, but preserving the value created in a brand should be the paramount concern in these situations.

 

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Matthew McLaughlin

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