Taking steps to protect and police your trademarks
In actuality, there are no official public agencies that police and protect your trademarks. The closest agencies are U.S. and international Customs departments. But even then, you generally have to register your mark with the local Customs office and take proactive steps to educate Customs officials. You also have to inform them of the specific port(s) of entry of suspected counterfeit or infringing goods. However, monitoring ports of entry is labor intensive and does not address the issue of preventing third parties from registering marks that are confusingly similar to your own.
Question: How do you monitor your marks and prevent third parties from registering marks that are confusingly similar to your own?
Can you rely on local Trademark Offices to stop others from obtaining such registrations? Not necessarily. Whether a trademark is confusingly similar to another mark is a subjective determination based on several factors including sight, sound, meaning and the relatedness of goods and services. In the U.S., a Trademark Examining Attorney should refuse an application for a mark that is confusingly similar to a prior registration, but what you might think is confusingly similar might not be what the Examining Attorney thinks is confusingly similar. Moreover, there are inherent limitations in the databases used to search for prior marks and in how such searches are conducted that may result in confusingly similar marks not coming to the attention of Examining Attorneys. Further, in the U.S. and most other countries, no notification is given to the owner of a cited prior mark.
In the European Union under the Community Trade Mark (“CTM”) system, the responsible Trademark Office searches for similar prior CTM applications and registrations and currently sends advisory notices to the owners of such prior rights. However, it does not do so for national rights in individual countries of the European Union. And again, what is considered confusingly similar by one agency might be different from what you believe is confusingly similar to your mark.
On occasion, local trademark agents might send an unsolicited notice to a trademark owner regarding the publication of a confusingly similar mark, but it is generally in an effort to drum up business. Such random notification cannot be relied upon for regular monitoring and policing of third party filings.
Answer: As a trademark owner, you are responsible for policing your marks.
Solution: Hire your own private trademark police in the form of a trademark watch subscription. A watch subscription helps to alert a trademark owner of the existence of filings for confusingly similar marks so that the trademark owner can take action against the filing and prevent infringement and/or dilution of its marks.
Watch subscriptions can take several forms. The standard subscription monitors the publication of trademark applications worldwide and alerts a trademark owner to the publication of applications for confusingly similar marks. Subscriptions are also available for just selected countries or territories. Some watch subscription companies can also monitor newly-filed applications, domain name registrations and common law uses.
When an application for an identical or similar mark is found, a watch notice is sent either to an attorney for review or directly to the trademark owner. We generally receive watch notices for our clients’ marks, review the notices for relevance, and if relevant, we report the notices to our clients with our suggested course of action.
The costs for watch subscriptions vary depending upon the scope of the subscriptions, but are generally under $400 per year, per mark. It is much easier and less expensive to challenge a trademark filing early on (either just after filing or during the publication period*) than it is to try to stop infringement and cancel a registration once it has been in place for some time.
A watch subscription is an easy low-cost way to police your marks with a minimum amount of time and effort. Please feel free to contact us if you would like us to order subscriptions for your marks, or if you have any questions about policing and protecting your marks.
*The publication period varies from country to country, generally from thirty days to three months. In a few countries, applications are not published for opposition, or are only published for opposition after registration.
Should you have any questions, please contact:
Gabrielle A. Holley James R. Menker