Trademark Monitoring Programs

Trademark owners of USPTO Trademark Registration are required to monitor the marketplace for infringing trademarks. In 2021, there was an extraordinary increase in trademark applications being submitted to the United States Patent & Trademark Office (USPTO) for registration.  See the USPTO notice regarding its current trademark filing processing times. This extraordinary increase, which the USPTO has stated to be a 60% increase from 2020, may be due in large part to online retail platforms, such as Amazon, Ebay and Walmart, requiring (or strongly encouraging) brand owners to obtain active federal trademark registrations from the USPTO.  The extraordinary increase in trademark filings is also due to the growth of e-commerce over the last few years, which has fundamentally changed the way the consuming public now purchases products and services.

As new trademark filings continue to surge, trademark monitoring (which is different than “trademark watching”) has become a very important tool for brand owners.  Trademark monitoring helps fight against other identical or similar trademarks from being used or registered in the state and federal trademark databases.  When other identical or similar trademarks are registered in state and federal trademark databases, it results in brand dilution and possible trademark infringement.  Trademark monitoring is also an important tool for brand owners to fight against widespread trademark infringers, product counterfeiters, listing hijackers, and other dubious individuals lurking on the online retail platforms, such as Amazon, Ebay and Walmart.

Protecting Your Trademarks

Most brand owners have invested countless hours and significant amounts of money researching, developing and registering the perfect service or product name, logo, tagline, and other trademarks to identify their business, products and services.  Trademark monitoring is the responsibility of the trademark owner, not any State trademark office or the USPTO.  For that reason, our attorneys always suggest implementing a trademark monitoring program to ensure protection for their trademarks and their rights in the marketplace.

Our law firm offers each of its clients the opportunity to set-up trademark monitoring programs whereby our attorneys will monitor all 50 state, federal, and US territories trademark databases periodically to ensure any identical or confusingly similar trademarks are identified and addressed appropriately.  If potential conflicts or trademark infringement is identified, our attorneys will handle those issues through trademark opposition or trademark cancellation proceedings to ensure your trademarks are not diluted or infringed upon.

What is Trademark Monitoring?

Trademark monitoring is the proactive service of searching all relevant trademark databases, and sometimes the internet and online retail platforms, for identical or confusingly similar trademarks – such as business names, product and services names, logos, taglines and other trademarks. Thousands of trademark applications are filed with the USPTO each week.  Even more trademark applications are filed in the 50 state and US territory trademark databases.  Our law firm has access to all relevant trademark databases in order to perform real-time trademark monitoring services.  If an identical or confusingly similar trademark is identified, our attorneys can address the conflicting trademark quickly to prevent use in the marketplace and also its potential registration.

Will the USPTO Refuse Registration of Identical or Confusingly Similar Marks?

Yes, the USPTO examining attorneys try to refuse any and all applied-for trademarks that may conflict with any pending or registered trademarks.  However, USPTO examining attorneys are only human and mistakes do happen.  Further, the review and analysis of trademarks for federal registration is a subjective process and can often lead to differences of opinion.  Therefore, the USPTO (and, depending on the trademark, some State trademark offices) will act as a first line of defense in protecting your trademark and, through our proactive monitoring services, we can ensure no identical or confusingly similar trademarks will slip through the cracks.

Strategies to Prevent Identical or Confusingly Similar Mark From Entering The Marketplace

If our attorneys identify an identical or confusingly similar mark that has entered, or potentially will enter, the marketplace, there are several strategies we can pursue on your behalf.  Our attorneys may file a notice of protest with the USPTO if the conflicting trademark application has not yet been published in the Trademark Official Gazette for opposition.  If a conflicting trademark application is currently in the 30-day publication window, our attorneys may file a notice of opposition to register the trademark with the Trademark Trial and Appeal Board (TTAB).  If a conflicting trademark has already passed its publication period, our attorneys can prepare to cancel the trademark with the TTAB once it officially registers.

Lookout For Trademark Scams and Solicitations

The USPTO has issued several warnings on trademark monitoring and document filing companies that seem to be associated with the USPTO or other state or federal government agencies.  Unfortunately, there are many businesses that are contacting trademark applicants and registrants and attempting to get them to pay fees and services that are not needed or required, or to pay inflated fees, or to provide services which they, as non-attorneys, are not authorized to provide. The overwhelming majority of these notice letters are simply scams and these dubious individuals seem to be proliferating.  Even if some – and that’s a stretch -are offering legitimate services, the USPTO, to our knowledge, certainly does not endorse any of these these solicitation companies (in which the recipient has absolutely no relationship) and you are not required to use them.

Please be on the lookout for these scamming companies.  If you are a client of this law firm, our trademark attorneys will be named as the attorneys of record and will receive all official communications regarding your trademark.  If you receive a letter in the mail or an email asking for money, it’s more than likely a scam.  If you receive any communications regarding your trademark, please contact our firm immediately.