A trademark watch service, also known as a trademark monitoring service, is a proactive monitoring service that plays a vital role in safeguarding a company’s trademark rights. It involves regularly monitoring trademark databases and other sources to identify any new trademark applications or registrations that may be similar to or potentially infringing on your existing registered trademarks. The main objective of a watch service is to alert you about any similar marks being registered so that you can take immediate action, such as opposing the registration or petitioning to cancel the mark if it has already been registered.
The Importance of Opposing Conflicting Marks
When you receive an alert about a potentially conflicting mark, you have the option to oppose its registration or allow it to proceed. There are several factors to consider when making this decision, including strategic considerations, resource availability, and the level of risk the proposed mark poses to your trademark rights.
By choosing not to oppose the mark’s registration, you essentially allow the proposed mark to coexist with your own mark in the marketplace. However, it is crucial to note that as more marks get registered, the scope of protection for your mark becomes narrower. Therefore, it is generally not advisable to allow these marks to proceed to registration.
It’s worth mentioning that deciding not to oppose a trademark application doesn’t mean you cannot take legal action in the future. You can still initiate legal proceedings to cancel the registration within five years of its registration date. However, the earlier you take action, the better.
Proactive Monitoring for Early Identification
By utilizing a trademark watch service, companies can proactively monitor the marketplace and detect potential trademark infringements at an early stage. This proactive approach eliminates the need to wait until your competitors have established their businesses and are less likely to change their branding. With a watch service, you can identify potential infringements sooner and take necessary legal actions while the other party is more willing to reconsider their branding choices.
Options for a Trademark Watch
When setting up a trademark watch, you need to specify two criteria: the jurisdictions to monitor and the trademark classes to consider.
Jurisdictions
Choosing the jurisdictions to monitor is a crucial step. With over 150 different jurisdictions worldwide, each with its own trademark system, it is essential to determine the ones that are relevant to your business.
Primary Markets: Your primary markets are the locations where your customers are based. For example, if most of your clients are in the United States, it would be wise to prioritize monitoring trademarks in the United States. Make sure you cover all countries that are your primary markets.
Zone of Expansion: Sometimes, you may have plans to expand your business into a jurisdiction where you are not currently operating. In such cases, it is essential to keep an eye on worldwide marks to preemptively secure trademark rights in that country. This helps ensure that no other company can obtain rights that may hinder your future expansion. To achieve this, you may need to file a trademark application as well.
Country of Manufacture: If your products are manufactured in a different country than where they are sold, it is crucial to set up a watch service for that country. This ensures that you are aware of any marks being applied for or registered in the manufacturing country, as your competitors or manufacturers may attempt to prevent you from exporting your goods.
Trademark Classes
Carefully selecting the appropriate trademark classes is vital to ensure comprehensive coverage of your trademark search. Here’s what you need to consider:
Choosing the Right Class: It is essential to pick the class that corresponds to the goods or services registered or applied for in your trademark registration. Trademarks are categorized into various classes, reflecting the type of products or services they cover. Refer to your trademark registration to identify the class to select for your watch service.
Including Related Classes: In addition to your primary class, it is advisable to monitor any other classes related to your goods or services. Keeping an eye on related classes helps identify potential conflicts with trademarks that cover similar or associated products or services. This proactive approach ensures that you are well-informed about potential infringements beyond your primary class. For instance, even if you haven’t sought protection in Class 42 for software-related services, it would be prudent to monitor this class if you have registered your trademark in Class 9 for software.
Considering Future Expansion: If you have plans to expand your product or service offerings into other classes in the future, it is wise to include those classes in your watch service. This way, you can closely monitor any new trademark applications that might impact your future expansion plans.
By carefully selecting the appropriate classes and coordinating them effectively, you can optimize the efficiency of your trademark watch service and safeguard your brand against potential infringements or conflicts.
Remember, a trademark watch service is an essential tool for protecting your valuable trademark rights and staying ahead of potential infringements. To learn more about trademark protection, visit Garrity Traina.