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Policing Your Trademark Or Service Mark

Federal registration is a major step in the protection of your brand name as a trademark or service mark provides your company with exclusive rights and peace of mind that your brand is protected. U.S. trademark rights holders, however, are obligated under the law to enforce such rights against third parties using identical or confusingly similar marks in connection with identical, related or complementary goods and services.  Therefore, protection of your brand name does not end with registration, but requires some form of oversight or “policing.”

In general, policing your trademark rights has the benefit of helping to keep identical or confusingly similar trademarks or service marks off the U.S. and foreign trademark registers and to reduce the number of identical or confusingly similar marks in actual use in consumer markets.  Such action can thereby help to maintain the distinctiveness of your brand name as well as the exclusivity and strength of your rights.

Lack of enforcement, or late enforcement, can potentially jeopardize your U.S. trademark rights by narrowing their scope or resulting in a significant or total loss of their exclusivity. Policing your brand name, therefore, is needed to identify third-party use and possible infringement of your brand, as well as to serve as a basis for an effective enforcement program in U.S. and foreign markets.

What is “policing” your trademark or service mark?  “Policing” refers to any surveillance program or watch service that your company employs to monitor third party use and/or registration of brand names that are identical or confusingly similar to your brand. While you may feel comfortable with a federal trademark registration, consider the options below which can help form an effective program that maintains enforceable rights.

Surveillance programs and watch services take different forms. 

Surveillance Program

Surveillance programs are offered by service vendors and involve placing a watch on a brand name in the U.S. and/or in foreign jurisdictions that identifies when the brand name owner’s registration is cited by the U.S. or a foreign trademark office against a third-party application seeking to register a confusingly similar mark. Such a surveillance program provides the brand owner with early notification of the application and allows sufficient time to determine how best to handle the potential third-party registration, and possibly to assess whether actual use of the conflicting mark has commenced in the relevant markets. Many global brand name owners use surveillance programs to ensure diligent monitoring, as well as early detection, across multiple jurisdictions.

Trademark Watch Services

Trademark watch services are also provided by service vendors and their scope can be defined broadly or narrowly, depending upon the needs of the brand owner. Watch services periodically search specific trademark registers and can include:

  • U.S. Patent and Trademark Office Watch
    • Newly-filed applications to register potentially conflicting marks.
    • Newly-published applications to register potentially conflicting marks, published for formal opposition during a 30-day opposition period.
  •  Foreign Trademark Register Watch
    • Newly published applications in a specific foreign country or region, published for formal opposition during a defined opposition period.
  • World Wide Watch
    • Newly-published applications in specific designated countries, typically available for about 250 countries.

Any U.S. or foreign watch service can be further qualified to monitor trademark registers according to:

  • All classes of goods and services under the International Nice Classification system[1], which most countries follow including the U.S.
  • Specific classes of goods and services under the Nice Classification.
  • Specific goods and services whereby the terms for certain goods and services are monitored in newly filed applications, which can serve as an oversight of competitor activities relative to trademark registration.

In selecting a surveillance program or watch service, your company can consider the relevant markets in which it currently promotes and provides products or services under its brand name, as well as those markets in which it anticipates future business expansion in order to monitor trademark registers and consumer markets for potentially conflicting marks. Whichever surveillance program or watch service your company elects, trademark attorneys routinely review reports and watch notices and can alert and advise their clients of potentially conflicting or infringing marks. While a trademark or service mark may be favorably examined and approved for registration in a particular jurisdiction, such mark could possibly weaken or conflict with your brand name, or have the potential to create a likelihood of confusion in the relevant market. Therefore, maximizing early detection through a surveillance program or watch service provides brand owners with enough time to consider what enforcement action to take, if any, as well as to assess the merits of such action and the associated legal costs.

Options for enforcement take different approaches.

Once a potentially conflicting or infringing mark is discovered through policing efforts, your company should consider with advice of counsel, what appropriate action to take, including one or more of the following enforcement options.

Cease and Desist Letter

A cease and desist letter prepared by your attorney can be sent directly to a third-party registration applicant or infringer, demanding the third party expressly withdraw its trademark registration application. If the third party is actually using the conflicting mark in commerce, such a letter can also demand that the third party cease all uses of the mark. While the registration application may be relatively easy for the third party to withdraw from the registration process, its actual use of the conflicting mark in relevant markets can be more difficult to address, but would, nonetheless, need to be phased out to the satisfaction of the brand owner. A cease and desist letter is often the first step in enforcement.

Formal Opposition Proceeding

As a sole measure, or in conjunction with a cease and desist letter, your attorney can file a formal opposition with the U.S. Trademark Trial and Appeal Board, or work with foreign counsel in filing an opposition with the foreign trademark office, to oppose registration of the conflicting mark. In such instances, the brand owner would need to possess a trademark registration or application in the jurisdiction in which opposition is filed, or possess sufficient rights in the brand name as an unregistered trademark through its actual use in commerce in such jurisdiction.

Settlement

An additional or alternative option is to seek settlement of the conflict by the third-party applicant or infringer agreeing to sufficiently modify the conflicting mark to the satisfaction of the brand owner, so that, there is a significantly diminished possibility of weakening the brand owner’s mark and/or creating a likelihood of confusion in the marketplace. Additionally, or alternatively, the brand owner can insist that the third party limit the actual goods or services covered under the prospective registration,  and which are promoted and sold under the conflicting mark. Geographic limitations can also be useful to remove or reduce the presence of the conflicting mark in markets in which the parties’ respective marks may overlap and potentially create a likelihood of confusion. Settlement may also be achieved by the third party by entering into a license agreement with the brand owner in order that the third party can use the mark, although under contractually agreed-upon terms and conditions acceptable to the brand owner. Settlement can potentially offer the brand owner various options for a satisfactory outcome.

Recordation of Trademark Registrations with Customs and Border Control

An additional option that can help enforcement against an identified third party applicant or infringer, as well as with other potential infringers, includes recording the brand owner’s U.S. or foreign trademark registrations with the customs and border control of the implicated jurisdictions. For example, if a third-party applicant or infringer has filed an application to register a conflicting mark in a foreign jurisdiction, such third-party could potentially be exporting goods under the conflicting mark to the U.S. or foreign markets. In this instance, recording the brand owner’s registration with the U.S. Customs and Border Control, or customs control of the implicated foreign jurisdictions, would place customs authorities on alert of the brand owner’s trademark and associated rights, which can help to slow or stop the importation of the third-party’s products provided under the conflicting mark.

Litigation

Trademark litigation is the most expensive enforcement option and typically considered only after the options given above do not work, or are insufficient or inappropriate for the brand owner. Through its trademark attorney, the brand owner can file a civil lawsuit, alleging the third party infringes on the brand owner’s prior trademark rights through its use of the conflicting mark. The extent to which the brand owner’s reputation and brand name are or would be weakened or damaged by the conflicting mark’s use is one consideration for taking such action, especially if the third party refuses to resolve the conflict.

The ultimate goal of any enforcement action is to resolve the conflict, such that, there is little or no possibility of diminishing the distinctiveness of the brand owner’s mark, weakening its enforceable rights, or creating a likelihood of confusion in the marketplace.

What if the brand owner takes a long time, or too long, to enforce their trademark rights?

Brand owners should keep in mind that late enforcement can lead to third party infringers asserting the defense of “laches” to rebut and defend against an allegation of trademark or service mark infringement.  The “laches doctrine” can compromise effective enforcement if the brand owner waits too long, or an unreasonable amount of time, before taking any action to assert their rights after learning of a third-party attempting registration, securing registration, and/or using the conflicting mark in commerce. The laches doctrine can serve to protect a party alleged of infringement, who may be prejudiced by the brand owner’s unreasonable delay in making a claim.

Such inaction against potential conflicting or infringing third-party marks over time has the potential of diminishing the brand name’s distinctiveness and ability to distinguish the brand owner, and its goods or services, from competitors because it may allow too many identical or confusingly similar trademarks or service marks to exist on trademark registers and/or in consumer markets. As a result, the brand owner’s rights can be weakened or narrowed, such that, enforcement against third parties becomes difficult.

Proactive efforts to uncover potentially conflicting or infringing marks through surveillance programs and watch services, therefore, are important measures that a brand owner can readily adopt to help maintain enforceable rights. As a further measure of policing and oversight, it is recommended that a brand owner educate and encourage their employees to keep their eyes open for, and report instances of, possible conflict or infringement in relevant consumer markets through routine Google® searching or receiving Google® alerts. Such supplemental policing efforts can further help to ensure that instances of third-party use of confusingly similar marks are uncovered. However, once the brand owner learns of a potentially conflicting or infringing mark, such knowledge initiates the laches doctrine and the owner should not wait too long and needs to take action within a reasonable amount of time.


For more information on Trademarks and Copyrights, please contact one of Hinckley Allen’s Trademarks & Copyrights attorneys.

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[1] The International Nice Classification System classifies and assigns goods and services into specific numbered classes that are identified in trademark applications and registrations.

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