Trademark enforcement programs, also known as trademark monitoring programs, provide an important and proactive means for companies to monitor the commercial marketplace and federal and state trademark registries for possible trademark infringement violations.
Companies should consider the following steps to properly protect their valuable trademarks rights in the United States:
1. Conduct a Trademark Audit
For larger companies, a trademark audit provides a useful means in which to identify and prioritize those trademarks that are either intended to be used, currently in use, and/or may require maintenance in order to remain active on the Principal or Supplemental Register of the United States Patent and Trademark Office records. Included in the trademark audit should be a review of (a) the companies trademarks and the current scope of legal protection (federal, state, or common law); (b) a determination of which trademarks require additional protection (either in the form of filing for additional goods or services, recording the trademark with the U.S. Customs Service, Trademark Clearinghouse and/or applying for international trademark registration); and (c) confirmation that the chain of title for each trademark is accurately identified, assigned and/or recorded with the U.S. Patent and Trademark Office. Done properly, a trademark audit should be undertaken in close coordination with the company’s U.S. trademark attorneys and legal and business departments responsible for the protection, marketing, and development of the brand names and associated products or services contained in the company’s trademark portfolio.
2. Subscribe to a U.S Trademark Watching Service
Once the company’s trademarks are properly identified and prioritized, it is advisable to place the company’s trademarks on a trademark watching service. U.S. trademark attorneys, in conjunction with brand protection services, can routinely monitor U.S. Trademark Office filings for confusingly similar applications that may pose a threat to a company’s trademark properties. Companies can submit a list of their trademarks to be watched, and the results of trademark applications that have the same or similar words or terms will be routinely furnished to the trademark owner or its U.S. trademark attorneys for further assessment and evaluation.
3. Monitor U.S. Commercial Trademark Usage
By subscribing to Google Alerts and/or a commercial trademark watching service, companies can routinely monitor the marketplace for trademarks and brand names that could be confusingly similar or that dilute the strength of their own trademarks. Once such trademarks are identified, the company’s U.S. trademark lawyers can properly assess the threat as viewed in conjunction with U.S. trademark law and determine what action, if appropriate, might be advisable. The U.S. trademark attorney should carefully review the infringing application or use and advise his/her client of its options to either file a trademark opposition, send a cease and desist letter, or both, where appropriate. In circumstances where the trademark infringement is immediate and serious, instituting a U.S. federal court action for trademark infringement and associated causes of action may be required.
Trademark attorney notes: Creating a U.S. trademark audit and brand enforcement plan is a wise investment for companies that provides a relatively inexpensive and proactive means to routinely protect and enforce trademark holdings in the United States. To discuss how a trademark audit could benefit your company or domestic and international brand name clients, feel free to contact the author.