Trademark monitoring is important because it helps to ensure that a person or company’s trademarks are not being used without permission, which can dilute the strength of the trademark and damage the company’s brand. Additionally, trademark monitoring can help a person or company identify and take action against potential infringements, which can prevent legal disputes and potential financial losses.
What Does the Trademark Monitoring Process Typically Involve?
The trademark monitoring process typically involves regularly searching for and reviewing potentially infringing trademark uses of a person or company’s trademarks, such as on websites, social media platforms, and in advertising materials. The trademark searches can be done manually or through the use of automated tools and software. (Our law firm uses Corsearch, the premier trademark search and protection platform for trademark and brand solutions. The Corsearch trademark platform provides our trademark attorneys with high-quality, intuitive tools that are unparalleled. Corsearch enables us to provide crucial legal advice to our clients in enforcing and maintaining our clients’ trademark rights, effectively represent our clients at the USPTO’s Trademark Trial and Appeal Board, and efficiently manage our clients’ trademark portfolios.) Once potentially infringing trademark uses are identified, they are evaluated to determine whether they are legitimate uses or actual infringements. If trademark infringement is found, the trademark owner may take action to have the infringement stopped, such as sending a cease and desist letter, filing a trademark opposition or petitioning for trademark cancellation.
It’s important to note that trademark monitoring should be ongoing and regular process, as new infringing uses can appear at any time. For more information, please see our trademark monitoring page.
What is a trademark opposition?
A trademark opposition is a legal proceeding in which a person or entity (the “opposer”) challenges the registration of a trademark with the United States Patent and Trademark Office (USPTO). The person or entity seeking to register the trademark (the “applicant”) must respond to the opposition and present evidence to support their claim to use and register the trademark. The opposition is decided by a USPTO administrative law judge, who will consider the evidence presented by both sides and make a decision on whether the trademark registration should be granted. The process typically includes legal briefs, evidence, and possibly testimony and witness statements. The process can take several months to a year or more to be resolved.
What is a trademark cancellation?
A trademark cancellation is a legal proceeding in which a person or entity seeks to cancel an existing trademark registration with the USPTO. The person or entity seeking cancellation (the “petitioner”) must provide evidence that the registered trademark is being used in a way that is likely to cause confusion with their own trademark, that the registered trademark is being used in a way that falsely suggests a connection with the petitioner, or that the registered trademark is being used in a way that dilutes the distinctiveness of the petitioner’s trademark. The trademark owner (the “registrant”) must then respond to the cancellation and present evidence to refute the allegations of the petitioner.
The cancellation is decided by a USPTO administrative law judge (but can also be decided by a federal court), who will consider the evidence presented by both sides and make a decision on whether the trademark registration should be cancelled. The process typically includes legal briefs, evidence, and possibly testimony and witness statements. The process can take several months to a year or more to be resolved.
It is important to note that a trademark cancellation proceeding is different from an opposition proceeding in that the cancellation proceeding seeks to cancel an already registered trademark, while an opposition proceeding seeks to prevent the registration of a trademark that is the subject of a pending USPTO trademark application.