Trademark attorneys are often asked how trademark owners can protect their rights. The first answer is register their marks in jurisdictions where goods or services bearing the mark are sold or likely to be sold in the near term. But what about after a registration issues? How can one know if one’s rights are infringed or threatened?
Trademark registration is important because, in most countries, trademark ownership is established by registration. In the U.S. ownership is established by use of a mark, but registration provides valuable benefits, including notice of one’s rights, presence of your mark on a searchable trademark register, and evidentiary value if an enforcement action is necessary. But registration is just a first step. Learning of possible infringements and threats to your rights and taking appropriate action is necessary to maintain the health and value of your marks. Failure to police infringing trademark uses puts one’s trademark rights at risk: use by others of confusingly similar marks removes your control over the reputation and goodwill associated with your mark and dilutes its strength.
To maintain and maximize value in their marks, trademark owners are advised to monitor for harmful conduct by others. Fortunately, there are tools to help.
Watch Services:
Watch services monitor domestic or international trademark registers, scanning for filed or published applications for words or designs that may conflict with your mark(s). If a potentially conflicting mark is disclosed, the watch service will provide details permitting an assessment of whether an opposition to the application or other action is appropriate. Typically we contract with a watch service on your behalf and the watch notices are sent to us. We review the notices to assess their merit and inform you of the notices that require your decision and instructions. In addition to trademark watches, there are watch services for domain name registrations, company names, and social media sites.
There are many options for watch services and the annual subscription charges vary depending upon the geographic scope of the watch and the number of marks and classes watched. If you are interested in subscribing to a watch service, please contact your OW&E attorney.
Amazon Brand Registry:
Amazon offers a service through its selling platform to assist trademark owners more easily stop sales of infringing or counterfeit goods on Amazon. Brand owners enrolled in the program can search for potential infringement across Amazon’s stores around the world, file reports to have infringing content removed quickly, and can have Amazon search for and remove infringing listings automatically. You can find additional details on the Amazon Brand Registry site.
A Certificate of Registration is required to enroll in Amazon Brand Registry; a pending application is not sufficient. Amazon accepts registrations only from these 18 offices: the United States, Canada, Mexico, the European Union, France, Germany, Italy, Spain, Netherlands, the United Kingdom, Turkey, Saudi Arabia, the United Arab Emirates, India, Japan, Singapore, Brazil, and Australia. A trademark registration in any of these countries will allow a brand owner to initially enroll in Amazon Brand Registry, but policing is geographically limited. Brand owners will need additional, country-specific registrations to add other Amazon stores to its Brand Registry enrollment.
The time to obtain a Certificate of Registration in the U.S. can be nine months to a year or more, depending on many factors. Registrations in some countries can issue in a matter of a few months to several years. If the Amazon Brand Registry is part of your policing strategy, talk to us about how best to proceed.
Google Alerts:
Google offers a tool that monitors the internet for mentions of keywords you list. By setting up alerts for your trademarks you will receive daily emailed reports with mentions of the marks. Google Alerts relies on Google’s search engine indexing technology and cannot be relied upon to identify all mentions, but it is a useful free tool for monitoring media mentions involving your marks and identifying potential threats. You can find more details on Google Alerts here.
Customs Recordation:
A useful resource for reducing the flow of counterfeit or infringing goods into the U.S. is to record your trademark and copyright registrations with U.S. Customs & Border Protection. When Customs agents identify potentially infringing products while inspecting incoming goods, the registrant is notified and given an opportunity to prevent entry of the goods by having them seized. For more information about Customs recordal and its benefits, see our recent article on our website here.
– Contributed by Spencer Owen