People monitor a lot of things; the things they value. We have alarms that monitor the security of our cars and homes. We have alerts that tell us if someone is using our credit card, and we even have monitors to tell us when our credit scores go up or down. We do this so that we can keep our eyes on the things that matter the most to us.
If you have a registered trademark, aren’t you supposed to monitor it just like the other valuable things? How will you know if another company is using it for their goods and services or if another company filed a similar trademark recently? The fact is, simply owning a registered trademark automatically does not prevent someone else from using it. You can enforce the legal rights that you acquired from a registered trademark only if you find out about the usage or filing of a similar trademark.
Lucrative brand names get copied, and this is why trademark monitoring is so important.
If you fail to regularly monitor your trademark, it can be weakened over time by something called dilution.
Dilution occurs when others use your mark or a mark very similar to yours to an extent that it’s no longer unique to your products and services. In other words, your customers become unable to relate your products and services to your mark. When this happens, others can begin to use your trademark without permission.
What’s more, someone who wants to use your trademark could petition to have your trademark canceled on the grounds that you have not adequately policed the marketplace and have allowed your mark to be diluted or to become generic.
If you don’t think this can happen to you, understand that it has happened to a number of very famous brands that you have probably heard of––Refrigerator, Aspirin, Roller Skates, Escalator, Xerox, and Kerosene.
At one time, these were all strong trademarks, but because of dilution, they have become generic and are now relatively unenforceable.
Trademark laws require the owner of the trademark to police the marketplace and Trademark Office register. If you do not police the marketplace and enforce your trademark registration, the rights in your registration will narrow over time to the point where they become impossible to enforce.
While that may be a worst-case scenario, it is extremely important that you do not allow other companies to use, file and register trademarks that are the same or confusingly similar to yours for the same or similar goods & services as the trademarks have the registration for. The more you allow trademarks that are similar to yours to get used and registered and the longer you wait to take action, the more diluted it will become and the more difficult it will be to enforce your trademark.
It is very difficult to recover from trademark dilution. So, early and constant vigilance is the only thing that keeps your trademark safe.
A trademark watch is a type of service provided to registered trademark owners that helps them police the Trademark Office database and monitor if somebody files for a similar trademark. It can be customized and configured to your own needs and preferences and gives you various options for protecting your trademark.
The examining attorneys at the trademark offices are highly skilled and well-intentioned, but they do not always report possible conflicts with other marks. In some jurisdictions, like the European Union and the United Kingdom, the Trademarks Office will not check for similar trademarks leaving it up to 3rd parties to oppose during the opposition period.
While some Trademarks Offices (Canada, US, Australia, China) will check for similar trademarks and possibly refuse registration of newly-filed applications only if they consider they are similar to your prior-filed marks, eventually your mark is your own responsibility.
A trademark watch gives you the ability to file for the opposition or cancelation of a confusingly similar trademark or simply put a hold of a similar mark on notice by sending them a cease and desist letter and notifying them of your earlier rights. It also reduces the amount of money and time you ultimately spend opposing the registration of that trademark.
The further along a competitor gets with registering their trademark, the more resistance you will encounter when you oppose their trademark registration or move to have it canceled.
Need Help Monitoring Your Trademark?
Registering your trademark is very important but is not the final step. The trademark registration is just a piece of paper unless backed by the prosecution of trademark infringement.
There are hundreds of trademark databases and it is possible that someone could register and use your trademark or a confusingly similar trademark without you knowing. This is why you need someone to monitor your trademark.
Registration of your trademarks is only one part of a trademark protection plan. It is up to trademark owners to monitor the marketplace to make sure that no one else is trying to register a confusingly similar trademark and subsequently push the registered mark to dilution.
How Can you Monitor the Marketplace?
Monitoring the marketplace is very important and should be done by the trademark owner on a regular basis. A few ways a trademark owner can monitor the marketplace, such as, by using various search engines and checking the Internet for websites containing a reference to your trademark. Another useful and free tool is “Google” alerts that can be configured in a way to notify a trademark owner if any new website or news article comes up mentioning the trademark in question.
To check social media, you can use the namechk.com website which can come handy to check all social media and domain names at once.