While obtaining registration with the United States Patent and Trademark Office (USPTO) is often seen as the end-game for many new trademark owners, this is in fact just one step in an ongoing process to develop, protect and maintain a brand owner’s rights in their intellectual property. To be sure, registration is a key step toward effective brand control, but ongoing trademark monitoring is essential to managing and protecting any trademark portfolio.
Trademark monitoring is the task of examining the market for illegitimate, unauthorized, and otherwise negative references to a company’s trademarks. United States trademark laws actually require brand owners to monitor and police their trademarks in order to retain their exclusive rights, and thus failure to conduct appropriate monitoring and enforcement activities can result in the combination of both negative image and loss of exclusivity.
Loss of Exclusive Rights
First and foremost, as noted above, failure to actively monitor and enforce a company’s trademarks can ultimately result in loss of the exclusive rights that accompany a federal trademark registration. Federal law actually requires trademark owners to monitor and enforce their trademark rights, and brand owners who neglect to do so are likely to face claims from third parties that they have “abandoned" their trademarks by failing to diligently enforce them. If a brand owner seeks to enforce its trademark rights against an apparent infringer who claims abandonment, it will have to be able to show that it has consistently made reasonable efforts to monitor and enforce its trademark rights.
Beyond maintaining exclusive rights, the primary issue addressed by trademark monitoring is that of consumer confusion. Whether from counterfeiters or other infringers (such as start-up enterprises that do not properly clear their trademarks before adopting them), consumer confusion created by multiple similar (or identical) trademarks in the marketplace can be disastrous for a brand-based business. By monitoring their trademarks, brand owners can quickly spot and address instances of infringement before they cause significant damage.
Imagine this: One day a consumer comes to you complaining about a product they purchased recently, and demands a refund. You review your order history, and discover that you did not sell the product in the first place. However, the customer insists that they purchased the product from you, because they recognized your logo on the packaging. You do some research, and find out that a competitor has been using a trademark almost identical to yours for the past six months. When you contact the competitor, they refuse to change their logo, claiming that they adopted it innocently (although this is not a legitimate excuse), and anyway they purchased their domain name a long time ago, so they aren’t sure that you actually have prior rights. Plus, they have sunk a lot of money into marketing, and they aren’t going down without a fight.
Now imagine this: You receive notice that someone has purchased a domain name that is uncomfortably similar to your primary trademark. You contact the purchaser almost immediately informing them of your pre-existing trademark rights, and stating your intent to enforce them. The domain name lies dormant over time.
This is the value of trademark monitoring.
Another issue that can be proactively addressed through trademark monitoring is preventing and (when necessary) responding to negative references to your company’s trademarks on the Internet. Whether from consumer reviews, social media posts, or competitors’ advertisements, negative brand references can appear and spread in the blink of an eye. Active trademark monitoring allows brand owners to identify and react to negative references before they get out of control.
As a result of these issues, trademark monitoring can sort of be thought of like insurance—a necessary expense that you will sure be glad you have when you need it. Only by monitoring their trademarks on an ongoing basis can brand owners ensure that they—and they alone—are controlling the image of their brands in the marketplace.