An Innovative Trademark Protection Strategy For All Brand Stewards

Craig Bailey,

One of the first questions asked by trademark owners when a trademark watch service is recommended to them by counsel is: “I have a registered trademark, why do I need a monitoring service? Is it not protected automatically?” The short answer is “No”. Trademark registration is only the first step in the effective use of a brand name.

Trademark watching for brand owners and IP professionals

Trademark attorneys are already clear on the value of a watch service, but if you are a trademark owner asking whether a trademark watch is necessary, it’s important to know that you will also need to protect your trademark coverage by continually policing and enforcing it. This ensures that others don't apply for, or use, similar marks to yours (and by keeping your registration current). The use of a confusingly similar mark by a third party can damage or weaken the strength of your own trademark and so you need to be vigilant at all times.

For IP professionals, the question is not simply whether a watch is necessary, but how to construct a watch strategy that expedites the earliest possible detection of potentially confusing trademarks. After all, the deadlines associated with submitting oppositions to an attempted registration by a third party are typically rather short and challenging trademarks after registration can be a far more expensive approach.

In this article I outline why a trademark application watch strategy is so important for all brand owners and offer some innovative solutions to help trademark professionals to save time and money, and win new business!

Trademark watching is a security system for brands

I often liken the process of implementing a trademark watch to installing a home-alarm system. If a thief tries to break in and the alarm goes off, it is highly likely that the thief will either run away without taking anything — or they will just grab what they can see in the moment and hightail it. Law enforcement officers will typically also be notified at an early stage meaning they have a higher chance of apprehending the thief and getting your property back to you.

When a home has no alarm, a burglar will have opportunity and ample time to break in.  They can create significant damage while searching for valuables and be long gone before the police are even notified. Having no home-alarm installed significantly reduces the probability of catching the thief and getting your valuables returned safely to you.

I find this analogy perfectly mirrors the trademark protection system in jurisdictions where there is an available oppositions procedure. Early notification gives trademark owners a real chance to abate any threats to their brands before registration occurs, and any use-related infringement actions ensue — which is when real damage can be caused! Trademark watching is not just an extra service then, but an important component of the entire management of brand risk and performance.

The limits of trademark oppositions

Opposition procedures exist in most countries around the world, but not in all. For example, some countries prefer to examine risk of confusion by a Trademark Office Examiner. However, the oppositions process is an integral part of brand protection in most territories around the world today, including Europe and, especially, within the European Union.

Most European countries have no examinations on prior right and therefore anyone could (in theory) go to the Registry and apply for an existing brand in the same classifications. The application would proceed to publication. It then becomes the responsibility of the owner of that brand to stop that application from proceeding to registration.

The value of trademark watching for different parties

It’s clear why trademark watching is an important consideration for brand owners, but for law firms there are additional benefits too.

Part of this lies in them being able to offer a comprehensive watching service for their clients. A trademark owner cannot take action against something unless they are aware that a threat to their brand exists! Opposition cases can be an important source of revenue for trademark attorneys and so it is important to keep watch on this kind of activity, investigate on the use, and act by filing an opposition if appropriate on behalf of your client. Savvy trademark professionals can also receive notices alerting them of potential new clients’ marks and then use this business intelligence commercially. 

Staying ahead of competitors and gathering real-time business intelligence to maintain a successful trademark strategy can sometimes be a challenge for a busy law firm. TrademarkNow’s Competitor Watch tool gives you the data, intelligence, and insights you need to monitor your competition, achieve business growth, and boost revenue. Trademark watching is your ticket to these opportunities.

We know that brand owners have different strategic needs. Some like to watch all of their trademarks and others just a select few to keep tabs on. However, I have discovered that the vast majority of brand owners do want to take action if a potentially infringing trademark application is affecting any given trademark in their portfolio. Offering a robust watching service enables trademark professionals to be a better business partner and deliver a better service to clients.

Over the years, I have seen many different business modules for offering this service to clients. Some law firms typically build their legal opinions based on the data provided to them by our solutions. Others simply share the data reports directly with their clients – especially if their client is a startup or small business, or has budget constraints.

Which trademarks do you need to watch?

So, which trademarks do you really need to watch? Perhaps you do not need a comprehensive service for all the marks in your portfolio, but then again, can you afford to leave any marks exposed? This is the difficult decision many brand owners and their representatives have had to make until now.

Despite the service being more affordable than one might expect, applying a watch to all marks would be difficult to quantify in most cases. How does one make a decision on which marks to include or not?

Corsearch’s recent acquisition of TrademarkNow has opened a new era for the watching service as two different approaches have merged. The result is a multi-tiered solution that could serve different needs for the same client. The comprehensive Corsearch watching service is available for key marks and figurative elements, and now we also offer a unique, customizable trademark monitoring solution — Portfolio Watch — which allows you to watch a client’s entire or partial portfolio, resulting in a more compact strategy. You no longer have to decide which marks should be watched and only need to identify your brands that require more comprehensive protection.

Let technology do the heavy lifting

Today’s innovative legal technological advances mean that trademark watching is much more accessible now to all businesses, regardless of size. Technology has greatly improved the tools that are available to organize and administer your watching and this has resulted in smaller law firms or in-house counsel at SMEs managing their instructions with less human resources.

Watch strategy for international clients

What if your clients are foreign companies and they have their own service in place? A portfolio watch is also valuable as a “back-up” service ensuring you get notified of any potential opposition cases in your territories. It is no secret that big brand owners sometimes use more than one law firm in any specific jurisdiction. Occasionally their internal analysts will see results in their own watch service, but they have not taken action yet or are uncertain if it is necessary to act. Law firms that apply a portfolio watch to their clients’ brands will see many of these same results and can then choose to proactively contact their foreign clients to see if action might be required. There are many firms using this strategy with much success today.

Final words

Whatever watch strategy you decide to implement, one simple truth will remain. Without trademark watching, brands are exposed to threats. In most jurisdictions a cancellation action is much more difficult to win than an opposition procedure.

Trademark protection is gained through registration and also by enforcement. So, if you do not enforce your rights by means of taking pro-active action against signs that might create risk of confusion with your own trademark or who are using your trademark in line with the criteria of your own registration you may end up with a “right” that is not actually held to be a valuable asset — what makes the asset valuable are consistent trademark protection and enforcement strategies.

As a brand owner or IP representative the benefits of a robust watching service far outweigh the investment or initial extra set up work. The only question that you should be asking yourself is actually: “If I do not have a watching service in place then why am I protecting this brand?”

If you would like to learn more about any of our new, flexible trademark monitoring solutions please contact a Corsearch watch expert today.

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By Craig Bailey
Craig Bailey entered the IP Services business in 2001 with a Benelux-based provider which was eventually acquired by Corsearch in 2010. The defining moment of Craig’s career was when the European Union welcomed 10 new members in 2004. Craig began promoting the importance of trademark searching and watching in these new territories while learning more about the specific needs of IP specialists in developing markets. Craig is a Senior Account Manager working with clients in Central and Eastern Europe, the Middle East and Africa and is also an active member of INTA and ECTA, serving on committees in both organizations including Chairperson of the Publications Committee at ECTA.

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