Filing a trademark application and registering a trademark are important steps in a brand strategy. But they are often not enough for business owners who want to develop and protect their brand. After all, competitors, bad faith applicants, and businesses that do not know about the existence of your trademark may apply for registration of a trademark identical or similar to yours, and sometimes even register such a trademark. What actions can you take to prevent this? Trademark watching may be the answer.
Why conduct trademark watching?
Of course, the examiner of the trademark office conducts a search for each trademark and may issue a preliminary refusal to register a trademark. However, there are many cases when the examiner does not issue a refusal, and you, as the trademark owner, might believe that the application for trademark registration filed after that will cause a likelihood of confusion. Even if the examiner has issued a preliminary refusal for a similar trademark, the applicant has the right to respond and provide its arguments in favor of registration.
For these purposes, it is essential for a trademark owner to monitor trademarks filed for registration for further action. For example, if you find that a third party files a trademark application for a trademark similar or identical to yours, you can contact the applicant to state your position and negotiate a limitation of the goods or services covered by their application. You can also file an opposition to the registration of such a mark.
Timely filing of oppositions and other responses before the trademark is registered is usually less risky and less costly than taking other actions, including litigation, after the conflicting trademark is already registered.
You might also be interested: Opposition to Trademark Registration in the U.S.: What Foreign Applicants Need to Know
Frequency of trademark watching
It should be noted that the opposition period is quite short – only 30 days after publication of the application, meaning regular and frequent trademark watching, ideally on a weekly basis, is worthwhile. This will allow you to react in a timely manner to protect your rights.
Scope of trademark watching
Trademark watching might be covering:
- The trademarks filed just in the U.S.;
- Trademarks filed in the U.S. and other countries, such as the U.S. and the U.K., the U.S. and EU member states. This type of watching is advisable both for those brands that already have trademarks filed or registered and for those that have an interest in the respective countries. Of course, without a trademark application, the range of countermeasures against trademark registration is much narrower, but timely information about potential problems in other jurisdictions and resolving them at the initial stage can save the budget and reduce potential risks;
- Global trademark watching, which covers 100+ (and sometimes 200+) jurisdictions. Such watching is often conducted by companies interested in global market entry.
Furthermore, trademark watching can be conducted both for the verbal part of the brand and for the logo.
When to start trademark watching
Trademark watching is most effective when not delayed and started soon after filing your application, as it will help you stay ahead.
Trademark Watching services at Ortynska Law
Ortynska Law works on the principle of an annual subscription. You pay the annual cost of trademark watching vendor services and legal support services.
In the event that a similar trademark is filed by another party, you will receive a report from Ortynska Law with further recommendations:
- The deadline for filing an opposition;
- The grounds for filing an opposition;
- The evidence required to file an opposition.
Mariya Ortynska will assist you in both the negotiation process and the opposition process if you are interested in further action. To discuss the type of trademark watching that best suits your goals, contact Mariya Ortynska:
Email: [email protected]
T: 9147035632