A trademark watch service (aka trademark monitoring service) is a proactive monitoring service that helps protect a company’s trademark rights. It involves regularly monitoring trademark databases and other sources to identify any new trademark applications or registrations that may be similar or potentially infringing on your existing registered trademarks. The watch service will alert you of any similar marks being registered so that you can oppose its registration or petition to cancel the mark if it has already been registered.
When you are alerted to a potentially conflicting mark, you have the option to oppose the registration of the mark. Or, you can allow it to proceed to registration. There are several reasons that you might decide not to oppose an application, including strategic considerations, lack of resources, or a determination that the proposed mark does not pose a significant risk to your trademark rights.
By not opposing the mark’s registration, you (i.e., trademark owner) are essentially allowing the proposed mark to coexist with your own mark in the marketplace. As more and more marks are registered, the scope of protection for your mark will become smaller. As such, it is not a great idea to allow these marks to proceed to registration.
It’s worth mentioning that the decision to not oppose a trademark application does not mean that you cannot take legal action later. You can still cancel their registration for up to five years after the date of registration. However, the sooner you do it the better.
By using a trademark watch service, companies can proactively monitor the marketplace and identify potential trademark infringements early on. You don’t have to wait till your competitor has grown their business and is less likely to switch their branding. This allows you to take necessary legal actions while the other side is more willing to change their branding.
What options exist for a trademark watch?
When setting up a trademark watch, you have to specify two criteria. First, you need to specify the jurisdictions where you want to watch. Second, you need to specify the trademark classes.
Jurisdictions: You need to decide which jurisdictions you want to conduct the trademark watch. There are over 150 different jurisdictions around the world, each with its own trademark system. The most common options for trademark watch services are:
Primary market(s): You want to choose the market(s) where your customers are located. For my practice, the United States is the primary market for many of my clients. As such, many of my clients choose the United States for their watch service. You may have one or more different primary markets. You want to ensure that you are watching your marks in all countries which are your primary market(s).
Zone of Expansion: Sometimes, you aren’t doing business in a jurisdiction but would like to do so in the near term future. Or, you aren’t doing enough business in a foreign jurisdiction to justify the cost of filing a trademark application. As such, you may want to watch worldwide marks to keep an eye on whether someone else is trying to preemptively secure trademark rights in the country. If so, you may be able to file an opposition to stop the other company from securing trademark rights. You would have to also file a trademark application to prevent any other person from filing the trademark as well.
Country of Manufacture: Typically, many of my clients sell their products here in the United States but manufacture in a different country (e.g., China, Vietnam, etc.). The watch service should be set up to watch marks being applied for and registered in the country where you manufacture your goods. The reason is that your manufacturer or other competitor may file in that country and prevent you from exporting your goods out of the country.
Trademark classes: When establishing a trademark watch service, it is crucial to carefully select the appropriate classes to ensure thorough coverage of your search. Here is a more detailed explanation:
Choosing the Right Class: It is essential to pick the class that corresponds to the goods or services registered or applied for in your trademark registration. Trademarks are categorized into various classes based on the type of products or services they cover. Look on your trademark registration and you can find the class you should select for your trademark watch service.
Including Related Classes: In addition to your primary class, it is advisable to encompass any other classes related to your goods or services. Monitoring related classes can help identify possible conflicts with trademarks that cover similar or associated products or services. This proactive approach ensures that you stay informed about potential infringements beyond your primary class. For instance, if you have registered your trademark in Class 9 for software, it would be prudent to monitor Class 42 for software-related services, even if you haven’t sought protection in that class.
Considering Future Expansion: If you have plans to expand your product or service offerings into other classes in the future, it is advisable to include those classes in your watch service. This way, you can keep a close eye on any new trademark applications that might affect your future expansion plans.
By carefully selecting the appropriate classes and coordinating them effectively, you can optimize the efficiency of your trademark watch service and safeguard your brand against potential infringements or conflicts.