If you are a professionally active company with ambitions, it is important to protect your brand throughout the year and round the clock. And here comes the importance of trademark monitoring where we keep a vigilant eye on the market to assess whether our marks (Trademarks, Tradenames & other IPs) are being misused by any third-party.
Once we establish that the reputation or distinctive character of our trademark is affected by someone else’s activity, we can then take appropriate action in certain circumstances to prevent our trademark being used for entirely different goods or services.
A successful trademark monitoring campaign begins with developing a proactive system in place to learn of misuses and that can be accomplished by implementing below-mentioned activities:
- Searching the web periodically for improper uses
- Searching USPTO’s online TESS database of federal trademark applications and registrations
- Following up on customer complaints
- Taking assistance from a professional trademark monitoring firm
- Setting up a Google Alert for your trademark
- Setting up various third party online trademark theft reporting process
However, the main aim of this article is to underline those parameters on the basis of which we can monitor our trademark and tradenames.
For unauthorized uses of a mark: There might be instances when your trademarks are used without your consent either to gain monetary advantage from your brand reputation or in an attempt to malign your brand reputation. In either of these cases, you are entitled to enforce your legal rights under statutory norms.
For uses of confusingly similar marks: The second instance that we can come across while monitoring trademark is the use of confusingly similar marks. Unlike, the previous one though the infringer doesn’t use our trademark they use confusingly similar marks. Under the statutory provision, this is also illegal to confuse buyers simply by using similar mark of another company.
Uses by approved/unapproved trademark licensees: The third case that may arise while monitoring brands for trademark violations is uses of trademarks by approved and/or unapproved trademark licensees. There may be cases when a previous licensee has not paid the license fee and continue to use our trademarks. In this case also, we can enforce our legal rights and get the compensatory injunction.
Once any of the aforementioned instances is established we can then move ahead to determine if trademark infringement can be established. To assess this we can then do following things:
Determine the territory: Trademark rights are territorial and are granted on country-to-country basis hence it’s important to determine the territory for conducting a trademark monitoring means what territory you are going to monitor for a particular trademark. Determine if the territory (geographic location) used will be an issue and/or if the use of no legal concern because it is a permitted fair use?
Determine if your trademark is registered federally: If your trademark is not registered federally then you can’t assert your right beyond the geographic location you are operating on and hence it’s important to determine right at the earliest that your mark is registered federally.
Mind the common law: Another important parameter which needs to be considered while doing Trademark Monitoring is the Common Law. As per the common law, a trademark is considered valid even if it’s not registered federally and the user can show the proof of using a particular mark first.