Trademark Monitoring

Why Do I Need To Monitor My Trademark?

You may lose your trademark if you don’t stop others from infringing.To maintain your trademark rights, you must: (1) continue to use your mark in commerce; and (2) ensure that others don’t use your mark or marks confusingly similar to your mark in connection with their own goods or services. Such uses are called “infringing” uses and may result in the loss of your trademark if permitted to continue.

You may lose your trademark if others use it generically. In addition to infringing your mark, others might use your mark “generically,” that is, as the every-day name of the relevant goods or services. An example of a generic use would be calling adhesive bandages “band aids,” where the name “Band Aid” is a trademark owned by Johnson & Johnson. To maintain your trademark rights, you must not only stop infringers, but also guard against generic use of your mark.

How Do I Monitor My Trademark?

You can monitor published applications. After a trademark application has been examined in the U.S. Trademark Office, the Trademark Office publishes the application for review by the general public for thirty days. During this time period, you may formally oppose an application if you feel that the mark in the published application: (a) is too similar to your own mark or (b) would otherwise damage you if permitted to register. This procedure, known as “opposition”, is an important mechanism through which you protect and maintain your trademark rights.

You can monitor state registrations and common usage. In addition to monitoring published applications for potential infringing marks, you can also monitor state registrations and common usage of your mark. Such monitoring should include all 50 state databases, as well as business name directories, domain name registration and internet usage. Common usage monitoring may be particularly important in guarding against generic use of your mark.

What Do I Do if Someone is Infringing My Mark?

Step 1: Contact the Infringer. Your first step in enforcing your trademark is to contact the infringer (i.e., the party using or seeking registration of a mark confusingly similar to yours) and demand that he or she stop the infringement. Such correspondence is usually in the form of a “cease and desist” letter sent by an attorney. If properly drafted, a cease and desist letter from an attorney is often enough to stop an infringer.

Step 2: Oppose the Registration or Seek Injunctive Relief. Where an infringer refuses to terminate his application or stop his use of an infringing mark, your only option may be to file an opposition (in the case of a trademark application) or seek injunctive relief through the courts (for an infringing use). A properly managed proceeding may convince an infringer to backdown early in the process, saving you significant time and money. Of course, choosing not to enforce your mark saves both time and money in the short term, but may lead to loss of your mark in the long term, a very costly proposition to say the least.

A Note About Trademark Office Maintenance Filings

In addition to enforcing your mark, you must file the required trademark office periodic filings to maintain your federal registration. The foregoing discussion regarding maintaining your trademark rights is separate and apart from your responsibility to file the various Trademark Office periodic filings (such as your section 8 and 15 affidavits and related fees). As always, it is important to remember that you must maintain your trademark and your federal registration – they are not the same thing.