Why Everyone Should Be Monitoring Their Trademark
As a trademark attorney, the most difficult thing to convince our clients to do, is to engage us to monitor their trademark registrations that we’ve worked so hard to obtain. I understand the mentality. Once you obtain your trademark registration, you are eager to move onto other priorities in your business and decide to not spend more money on your trademark until the renewal is due.
The main issue with this approach is that trademark law in the United States requires a trademark owner to police the marketplace. If you do not police the marketplace and enforce the registration that you’ve obtained, the rights in your registration will narrow over time, to the point that they could be almost impossible to enforce. Of course, that’s a worst-case scenario, but it’s incredibly important you do not have various companies trying to file and register trademarks that are similar to yours.
Clients will often contact us after a couple years to bring up an infringement problem. We’ll do some research and see there has been multiple companies filing for, and sometimes obtaining, trademark registrations that are somewhat similar to our clients. Over the course of a few years, these other registrations have narrowed our clients’ rights. Now that they have an enforcement target that they’re really worried about, it can be very difficult to enforce the trademark. When we send the demand letter, the person receiving it will point out the many other similar trademarks that now exist. This has happened, and it will continue to happen in the future, because we have clients that don’t sign up for monitoring of their trademark.
Monitoring can be done on your own, but having a lawyer will ensure a more professional approach with less chance for mistakes and oversights. Regardless, it is essential to monitor your trademark and to police the marketplace. You cannot set it and forget it, or you may lose rights in your trademark.
Josh Gerben, Esq.
Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.
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