Trademark Monitoring: Should You Be Watching ALL Your Marks?

Nick Potts,

Yes, trademark monitoring should NOT be limited to "crown jewel" marks.

Interestingly, that is exactly what most large corporations do - focus on their top 10-20 marks while ignoring the rest. At this point, most of our new clients express a similar sentiment:

Hold on. We're a HUGE company. We couldn't possibly monitor all of our brands with our current budget, staff, and time constraints.

While that statement may have been true in the past, it isn't anymore. Thanks to new technology, you can now watch all your marks without falling behind on more pressing responsibilities or pushing your budget into the stratosphere.

Trademark Monitoring: Why You Should Watch ALL Your Marks (and Then Some)

As is often the case, the key to efficiency is working smarter, not harder or longer.

In this article, we'll reveal how to begin accomplishing this goal with new technology-assisted software. We'll also reveal some of the less frequently discussed benefits of watching more than crown jewels.

1. Protect Against Increased Globalization

Thanks to increasing digitalization, protecting one's intellectual property has never been more important. As our economy becomes increasingly global, the potential for infringement has increased tremendously. In both B2B and B2C industries, consumers now have more options than ever before.

A quick Internet search can generate multiple options that would have otherwise been unavailable to previous generations, making the possibility of brand confusion all the more likely. With more and more businesses utilizing online sales and marketing, there is an even greater risk for market overlap.

Just check out what happened in Uber vs. Uber Promotions. A Florida judge ordered Uber (the international ride-sharing service) to not preempt Uber Promotions in search results conducted in Gainesville for the term "Uber Gainesville."

Setting aside the fact that Uber doesn't control the Internet, (how they will follow through on those orders, we're not sure), the case demonstrates the increasing complexity involved in determining "likelihood of confusion." Watch all your marks and you will be prepared to defend your company against threats both in your own backyard AND across the pond.

2. Avoid Damage Control

Say you work for a large company that owns dozens of trademarks, but you only watch 20 of them. What happens when another company emerges from the trademark filing process with one of your names unopposed?

Had you filed the appropriate opposition paperwork, the company likely would have been easily thwarted. Unfortunately, your only options now (aside from sharing a heart-to-heart with the competitor) are:

a). Pay off the competitor, OR

b). Move forward with costly legal proceedings.

Obviously, both options are likely to be exceedingly time-consuming and expensive. But, as the saying goes, you gotta do what you gotta do. While this may not be a 'crown jewel' mark in jeopardy, it is still likely an important part of your brand.

Why is watching all trademarks so important?

They provide the freedom and flexibility to expand upon your ideas however you choose. Just because a mark is a low priority today or in a less valuable market doesn't mean it won't become a hot commodity in the future. Watching all your brands allows you to protect your investments today and tomorrow.

3. Outsmart the Competition

If you are already watching all your marks, well done.

However, you might be surprised to learn something: There is ONE EXTRA thing you could be doing to protect your company brand even further — monitoring the filing activity of your competitors.

  • What new brands are they working on right now?
  • Which products have yet to be released to the public?
  • What are they doing to stay ahead of the curve?

Knowing what the competition is going to do before they do it can provide you with rare insight as you strategize moving forward. It may also give you some ideas about what is possible for your brand.

Monitor competitor trademark applications and you will have a leg up most companies couldn't even imagine. At this point, you are probably thinking, "That all sounds great, but we barely have the time (or the resources) to monitor what we do now."

We hear you — which is why we created NameWatch.

NameWatch: Sorting Through The Mess

NameWatch is the world's first trademark watch software designed to allow complete portfolio monitoring in the time it takes to have your morning coffee. Powered by a special algorithm, the program is designed to sift through mountains of data, so your legal counsel doesn't have to.

Tapping into both national and international databases, NameWatch analyzes potential offenders on your behalf before delivering fully ranked and relevant reports. The best part? YOU set the search parameters; meaning, you won't be bothered with extraneous results of little relevance.

Click Here To Receive a Free Ebook On Effective Trademark Protection   Learn how to overcome the 4 most common mistakes costing you time & money Download Now

By Nick Potts