Every in-house counsel knows the importance of protecting his or her client’s trademark portfolio from potentially confusingly similar trademarks.  So how do the best in-house counsel put their limited legal budgets to good use when considering when (or when not) to file a trademark opposition?

To quote the knight in Indiana Jones and The Last Crusade: they “choose wisely.”

Here are some tips on how to execute a simple and effective, U.S. trademark portfolio protection strategy.

  • Make Use of a Trademark Watching Service

Trademark watching services are a great investment. For an annual fee of only a few hundred dollars a trademark, a company can receive notice of all third-party trademark applications filed with the United States Patent and Trademark Office that are similar in sight, sound, and commercial impression to its own trademarks, including any and all third-party trademark applications that cover the same and/or related goods and services of the company’s products.

  • Prioritize Potential Trademark Oppositions

When reviewing recently filed third-party trademark applications it is important to consider your desired outcomes and goals prior to filing a notice of opposition. Not every trademark application that contains identical words or phrases of your company’s trademarks is necessarily an infringement.  To put it another way: before filing a trademark opposition, make sure that you are likely to prevail based on the merits.  The grounds for filing a notice of opposition may be found in a review of the U.S. Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) and relevant TTAB case law decisions.  When in doubt, always consider seeking a second opinion.

  • Know Your Potential Opponent

Before filing a notice of opposition, make sure that you are familiar with the applicant, including its commercial activities and, if possible, the nature of the goods that are either being used or intended to be used in association with the applied for trademark.  This will help in assessing the nature of the potential infringement, as well as whether the opponent is in a position to actively defend against any notice of opposition that may be filed.  In many cases, an applicant will abandon its trademark application once a notice of opposition is filed.  Despite this, every trademark opposer should be prepared to engage in a full litigation on the merits, and know the respective strengths and weaknesses of its case prior to filing a notice of opposition.

By having a trademark portfolio protection plan that (1) identifies potential threats to the portfolio; and (2) addresses those threats in a methodical manner based on sound legal considerations, companies may be better able to manage both their intellectual assets and legal budgets more wisely.