Obtaining a trademark registration with the United States Patent and Trademark Office is an important step for any business. It carries the presumption that the owner of the registration owns the mark in all 50 states, and is a way of establishing legitimacy in the marketplace.
While ownership of a trademark registration allows you to prevent others from using a confusingly similar mark, you have a duty to actively enforce your trademark. Failing to do so can actually erode your trademark rights. Allowing others to use the same mark is evidence that your trademark is not a strong one.
The USPTO does some work for owners of federal registrations in preventing confusingly similar marks from passing their examination process, but the fact is that the examiners who review trademark applications are people and the determining if a mark infringes upon another is a multi-factor balancing test. Two reasonable people can come to different conclusions when reviewing the same trademark application.
This is why the USPTO provides an alternative avenue of protecting your rights. As those who have gone through the registration process may know, the last step in the process after the examiner approves an application is called an Opposition Period. During this 30-day window, third parties can formally oppose an application, and argue that it should not mature into registration because doing so would infringe upon their trademark rights. A trademark owner can keep track of applications that are in the Opposition Period because they are published weekly on the Official Gazette, an USPTO publication that can be hundreds of pages long. However, searching through the Official Gazette each week will make any normal person’s eyes glaze over.
This is where monitoring services come in.
Various companies provide software services to monitor the Official Gazette for confusingly similar trademarks that are progressing towards registration. Signing up with these services allows trademark owners to be notified when such an application exists. At this point, the owner can work with an attorney to form a strategy for opposing the application.
At the end of the day, you as a trademark owner are responsible for policing your trademark rights, and not doing so erodes those rights. Monitoring the Official Gazette for potentially infringing trademarks is extremely tedious, which makes monitoring services very attractive. Stopping potential infringers in their tracks during the application process is an efficient way to stop infringement before it occurs, reduce the risk of expensive litigation down the road and ensure that your trademark rights are protected.
If you are interested in monitoring services, having an attorney monitor on your behalf, or would like legal aid with opposition proceedings or trademark disputes, we can be of aid. Please call (650) 271-9395 or email us at firstname.lastname@example.org for further assistance.
Written By: Vivek Vaidya
Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.