Trademark Monitoring, aka “Police Your Marks”
Trademark monitoring includes implementation of strategies to reduce risk and liability that result from unattended counterfeiting, diversion, tampering, and theft. Trademark registration is merely the starting point to maintain legal rights in a brand name. The all important tasks of trademark monitoring and enforcement are often overlooked. The goal is to insure that the differentiating thoughts and feelings about your brand are maintained, and that it remains valued and valuable, namely protecting brand equity.
What is trademark monitoring; why is it necessary?
Also called policing your mark, trademark monitoring includes maintaining trademark registrations, as well as monitoring new third-party entrants into market. Where appropriate, opposing those new entrants that infringe your rights is required. A monitoring program not only protects business value, it also bulletproofs the brand from costly legal challenges if attacked.
A mantra for preserving brand value: ‘Snooze and you lose.’— Cheryl Hodgson
A well-designed trademark monitoring program reduces online poaching and maintains brand equity. The objective of policing one’s rights is to address third-party uses before a little problem grows into a big one. The cost of an ounce of prevention is less than hundreds of thousands of dollars in lawsuits, or even worse, a complete loss of rights.
5 Easy Steps to Trademark Monitoring
1. Monitor the market for third-party entrants
Thomson CompuMark and Corsearch offer services that notify brand owners of new trademark and domain filings that conflict with trademark rights. Others, such as Mark Monitor, provide more sophisticated web reporting of problems through the use of “spiders” that crawl the web looking for infringing uses of marks. These monitoring services range from monitoring new domain registrations to complete observation of worldwide filings of marks in various countries around the world. These are invaluable tools for legal counsel and brand owners. They serve to alert counsel and clients to new applications before they issue and become problematic. In short, they provide a notice of potential infringing websites before they actually launch. If you don’t know about gTLDs, it’s high time you did. There are dozens of new domain endings, making it impossible for brand owners to monitor each domain. However, trademark owners can register trademarks in the Trademark Clearinghouse that will provide notice to owners of registered marks should an attempt to register trademarks in such domains as YOURBRAND.SUCKS.
2. Instruct Affiliates on Proper Use
Owners of large global brands have faced the challenges of brand management for many years. Among those challenges is teaching affiliates and the general public how to properly use a particular brand name. Affiliates include distributors, licensees, and franchisees (and in the Internet space, Internet affiliates). A brand usage and style guide outlining proper use of marks in advertising and marketing in various media is essential in today’s world in order to create and maintain a uniform presentation of brand names across the many many media platforms.
Affiliates, distributors, and licensees should never be permitted to register domains containing your trademarks. Written distributor, license, and affiliate marketing agreements should spell out this policy clearly. Domains containing your trademarks may be pointed to the distributor’s local site. However, ownership of the domain should be closely guarded and held only by the trademark owner. This ensures that if any distributor misuses the domain (for example, to post unrelated products or services at the URL), the trademark owner is in a position to shut down the improper use.
4. Monitor the Market for Uneducated, Generic Uses by Third Parties
When you discover others are inadvertently using your mark improperly in editorial content, politely let them know the proper use of your mark. Xerox offers a great model to follow in terms of providing proper use advisories to educate the public.
5. Maintain Registrations
Trademark registrations require periodic maintenance filings and renewal. Work with experienced brand counsel to calendar deadlines and make certain registrations are not inadvertently lost due to missed deadlines.