As a trademark owner, the
value in your brand lies in its ability to uniquely identify your business
as the source of products or services sold under your marks.
It goes almost without saying that it is important that others do not use
the same or similar marks for similar
products or services. If they do, the significance of your brand can
be diminished and, in the worst case scenario, confusion might result,
causing you to lose income, and eventually
even your exclusive rights in the marks.
Accordingly, it is a good idea to be on the lookout for other marks that
might infringe upon your brands.
There are various ways, in varying levels of detail, to accomplish this
purpose.
One relatively
inexpensive, albeit not very thorough, method is to conduct routine Internet
searches using your mark and variants thereof. This method is not very
directed and can result in a lot of unwanted hits, although search engines
such as GoogleTM
offer very wide coverage. Nevertheless, such searches might not
pick up similar marks, focusing instead on marks that fit the literal search
terms supplied by you. A significant
limitation of this approach is the inability to focus on design marks.
As an adjunct to this
common law search, a routine search of the United States Patent and
Trademark Office's online trademark database can be helpful to turn up new
applications. Such a search must be done on at least a weekly basis to be
useful. Again, though, this type of monitoring search will only pick up
terms essentially identical to those entered in the search, so it is
possible that similar marks will be missed if all possible
variants are not searched. Also, it
would be virtually impossible to monitor design marks.
Yet another approach would
be to have someone designated to review the Official Gazette on a
regular basis. This publication is the official U.S. Patent and Trademark
Office publication containing marks published for opposition. The virtue of
reviewing the Official Gazette is that it enables you to view all
published marks that may be similar, and to see what the goods or services
are that are connected to those marks. On the other hand, the Gazette
will not pick up state law applications or common law uses. It only covers
applications that actually reach
the publication stage and are not already registered or past the
publication stage. However, once you have applied for registration of a
trademark, presumably you have had a thorough search undertaken
of your mark up to that point. At a
minimum, you will know where you stand as far as marks in the USPTO are
concerned because you will receive feedback from that office if the
Examining Attorney thinks there are any problematic marks. Once your mark is
registered, however, the only feedback you will receive will be based upon
your own efforts, unless a third party contacts you.
Reading the Official
Gazette can be time consuming and cumbersome, especially if you have
several marks. For a relatively small amount of money (under $200 per mark
per year for word marks and in the range of
$300 per year for design marks), outside services such as Thomson
& Thomson will review the
Official Gazette for you or, alternatively, will keep track of newly
filed applications (or both if you want to pay for both). Comprehensive
watch services that include the USPTO, state registries, common law sources
and domain names can be obtained for a cost between $800 to $1,000 per mark
per year. Services such as Thomson &
Thomson will conduct worldwide watch services as well. Prices for these
services range from under $300 per mark per year for identical or
phonetically equivalent word watches in all classes and for confusingly
similar marks in one class or for identical
or closely similar designs in one class.
The U.S. and worldwide watches may be offered as a package as well.
Obviously, money is a
factor. You might decide that you only want to focus on your key brands. Or,
you might prefer to do a comprehensive watch for your key brand(s) and
utilize one or more other watch techniques for your minor brands. You might
also choose to do a combination of watch methods for maximum coverage.
Either way, monitoring marks is a significant step you can take to keep your
brand vital in the marketplace. Don't forget the old adage - "you snooze,
you lose." (December 2003)
[Contact
Author]
