You’ve created a trademark to protect your intellectual property, and followed all the best practices. Now what? How do you actually go about the ongoing work of monitoring your trademark for infringement? This is more important than ever in the age of globalization, when your trademark could be used by a competitor down the road just as easily as by a business halfway around the world.
Misuse of your trademark by other parties could cost your company actual revenue. It could also affect your reputation, if subpar products or services under a similar name begin to be associated with your business. Finally, failure to protect your trademark from infringement could lead to your trademark ultimately losing its value and being deemed a generic term, at which point any protection would not be enforceable anymore.
Basic Monitoring for Trademark Infringement
To begin with, if you’re just getting started monitoring your trademark, there are some simple tools you can use.
One is Google Alerts, which lets you set a specific term and be alerted anytime one of Google’s crawlers come across a page, news story, or other bit of content that mentions this term. To cover your bases, you should set several different terms that are variations on a theme that is your trademark. This is helpful in case someone tries to use a trademark that is one letter off from yours, or other similar strategies.
The USPTO, where you registered your own trademark, is another convenient resource. You can regularly check new filings for trademarks similar to your own, and if anyone gets too close, you can oppose the registration of the trademark. This opposition must be filed within 30 days of the proposed registration appearing in USPTO’s journal, the Official Gazette. To do your regular search, you can use TESS, the Trademark Electronic Search System.
Your opposition will be decided by the Trademark Trial and Appeal Board. Depending on the seriousness of the infringement and your particular circumstances, you may want to hire legal representation to help you state your case.
Of course, you must consider that this would catch more formal cases of trademark infringement — many egregious trademark infringers would not bother trying to register their own version of the trademark.
What makes this most challenging is that these infringements aren’t always even advertised on the Internet. Take for example our case study of stopping trademark infringement for one of our clients in a small Chinese village.
In this case, an appliance store in a remote Chinese fishing community was using our client’s famous mark to sell food processing equipment. These were actually off-brand clothes dryers that the vendor had trouble selling even with the false brand name on them. Instead, they repurposed them as fish dryers. Our investigator visited the location in person and brought back evidence that the retailer was indeed using our client’s mark on food processing equipment. We worked with the local authorities and helped organize a raid that led to the seizure of the merchandise.
As you can see, this is the sort of thing that would be very difficult for a business to take care of themselves, both in noticing the initial infringement and in working internationally to stop it. And, the more trademarks you have registered, the harder it becomes to keep track of all of them.
What to Do If You Notice Trademark Infringement
If and when you do notice a case of trademark infringement, you’ll definitely want legal help on your side. The standard way to proceed is to send the business a “Cease and Desist” letter that informs the business of your trademark (in case they were not aware) and tells them to stop the infringement immediately, threatening legal action if they should fail to do so. If the infringer does not comply, you would file a lawsuit and take things from there. If the case is decided in your favor, you would then have the authorities on your side, and could use asset seizure and other methods to stop the trademark infringement.
Ultimately, trademark infringement monitoring is crucial for many businesses, but is too resource intensive for businesses to do themselves. A business with registered trademarks that have a high value usually outsources the infringement monitoring to an outside firm that has the staff and technology to do this kind of monitoring at scale. There is a cost associated with this, but it’s the cost of doing business, and one or two potential infringements avoided usually make the service effectively pay for itself.
So, how should you go about protecting your trademarks? If trademark infringement is important to you (and, if you took the time to register your trademark, it should be) our recommendation would be to hire a company that specializes in monitoring and fighting infringement. Think about it this way: if you notice infringement, you’ll need legal help anyway to stop it, so really the only part you can do yourself is the monitoring, and this is usually not so expensive as to be worth keeping doing yourself. The monitoring is the cheap part, fighting the infringement can lead to more expenses.
Another way of thinking about it is that companies that specialize in monitoring for infringement have systems in place that allow them to easily check a multitude of sources — even if you’re just one among hundreds of clients, they are likely to still do a better job than if you attempted to do it yourself, while taxing your own company’s resources in the process.
Ready to take the next step in monitoring and protecting your registered trademarks and valuable intellectual property?
At IpHorgan, we offer you insight that can only be acquired and meticulously developed during our 15 year history as a team with over 200 years cumulative professional experience working on intellectual property transactions with businesses in nearly every sector of the U.S. and global economy. We know trademark protection inside and out, and are ready to help you keep your trademarks safe. Reach out to us today to get started!
At IpHorgan, we offer you insight that can only be acquired and meticulously developed during our 15 year history as a team with over 200 years cumulative professional experience working on intellectual property transactions with businesses in nearly every sector of the U.S. and global economy.