A federal trademark is an extremely powerful tool to protect your brand. Let’s presume that you planned ahead and secured a federal trademark from the United States Patent and Trademark Office (USPTO). What next? You should start marking your brand with the federal registration symbol (r) on the goods/services that are covered by the federal registration. Besides paying for renewals, anything else?
All too often, trademark owners secure a federal trademark and take no action to monitor their brand. Sure, when a trademark owner sees a competitor with a similar brand or receives information from a customer about a competitor using a similar brand, it may be time to act. But isn’t there more the trademark owner can do to reduce the chance of similar brands in the marketplace?
Hiring a watch service to monitor pending trademark applications is key. Every trademark application goes through a 30 day publication period, before registration, where the public at large has the opportunity to oppose the brand seeking registration if it would cause confusion in the marketplace as to the source of the goods/services being offered, among other factors. The watch service will notify the trademark holder or their attorney of these pending applications and allow the trademark owner to get out in front of possible confusion in the market. An opposition can result in the new application being abandoned, a co-existence agreement that defines the scope and rights of the two trademark owners, and/or a full blown opposition proceeding before the Trademark Trial and Appeal Board of the USPTO. This is similar to federal litigation.
Another benefit of a federal trademark registration is that Trademark Examiners can use your registration as a basis to reject new applications attempting to register a similar brand in a related field based on a likelihood of confusion in the marketplace. The applicant may try to traverse the rejection but either way, you as the trademark owner should be on alert that someone is attempting to use a similar brand in business, or already has. This is critical information since even if the trademark application is abandoned, that does not mean the applicant abandoned its goal of using the brand in business. The trademark owner should monitor these companies and try to reduce confusion in the marketplace by properly policing their trademark rights.
Protecting your brand is a critical aspect of brand management. A brand is an asset, make sure to protect it. For any questions on trademark law, please contact Greg Popowitz below.
Registered Patent Attorney
AV Rated by Martindale-Hubbell
Intellectual Property Litigation
213 East Sheridan Street, Suite 3
Dania Beach, Florida 33004