A little-appreciated requirement for trademark owners is a duty to monitor and police their trademarks. This duty applies to owners of unregistered trademarks as much as federal registered marks, since registration is not necessary to claim many trademark rights.
What types of activities must be monitored and policed? Infringement and dilution. Or in other words, any third party uses of the same trademark or confusingly similar versions that might cause confusion in the marketplace about the source of the goods or services represented by the trademark.
Trademark Duty to Monitor and Police
2 basic reasons to monitor and police: First, the government won’t do it for you. The Trademark Office is actually quite explicit about stating this, see here. Second and more to the point, unchallenged third party uses of a trademark could legally – and actually – weaken the strength of the trademark as an identifier of the owner’s goods or services, which in turn weakens the owner’s ability to later enforce the trademark and devalues the worth of the mark.
I previously discussed the problems raised by generic or descriptive trademarks, types of marks that cannot even be registered under trademark in the first place, or at best only under the trademark office’s Supplemental Register (rather than the Principal Register), with its very limited protection.
Sustained multiple common uses of a trademark risks the mark being deemed – or actually becoming – in-distinctive or descriptive of a class of goods or services, rather than being principally identified with the owner of the trademark. (I previously suggested the example of “KLEENEX”.)
And that neatly sums up the real reason why monitoring and policing is so important: Not only can common usage of your name or brand prevent you from obtaining trademark registration in the first place. Indeed, registration can be lost or (more practically) made worthless by a prospective inability to enforce.
The duty to monitor and police is not a statutory requirement under the federal Lanham Act or any similar state law. Nonetheless, good trademark practice and intellectual property asset management demands attention to it. In rejecting or sustaining trademark owners’ claims of infringement, published caselaw involving some prominent trademarks has relied on evidence of a trademark owner’s failure to perform the duty (Hard Rock Café Int’l (USA) Inc. v. Morton, 1999 U.S. Dist. LEXIS 13760, No. 97 Civ. 9483, 1999 WL 717995 (S.D.N.Y. Sept. 9, 1999)) or a trademark owner’s successfully performing that duty (Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004)).
How to Monitor and Police
A good primer on this subject, including various avenues of monitoring and policing, can be found here from a cyberlaw class at the University of North Carolina Law School.
Many companies offer trademark monitoring services, including large data firms like Thomson Compumark and Trademark Express. Intellectual property law firms also provide this service to clients, including my firm and many others. Organizations with large intellectual property portfolios often dedicate in-house legal or paralegal staff to the process.
As many commentators note, monitoring for and early detection of infringing uses can be cost-effective in nipping problems in the bud, simply by facilitating contact with potential infringers early in the life of their infringing use, and thus presumably at a lesser level of investment and other commitment to their continued infringing use.
Since there is no statutory requirement to monitor and police, the required scope of the monitoring is nowhere mandated. Nonetheless, certain procedures are commonplace. These include:
1. Regular monitoring of the US Patent and Trademark Office’s trademark database, Trademark Electronic Search System (TESS), on a regular, scheduled basis.
2. Prominent use of the “®” symbol for registered trademarks, and “TM” or “SM” symbols for unregistered (or pending registered) trademarks, on all public uses of your goods or services, to formally establish your own public claims on your marks.
3. Establishing and implementing a company-wide trademark usage policy. This is typically made part of a company’s Personnel Policy or Employee Manual, though sometimes separate. The trademark policy alerts all company management, staff, vendors, business partners, contractors and subcontractors, agents, and others on both the rights established by the company’s marks and proper usage of the marks.
4. Conducting a thorough search of your trademarks in the top internet search engines (Google, YouTube, Yahoo!, Bing and AOL), on a regular, scheduled basis.
5. Setting up Google Alerts to automatically monitor trademarks.
6. Contacting potentially infringing third parties to alert them of your trademark rights, and requesting compliance with changing or stopping usage.
7. Sending “cease and desist” letters.
8. As necessary and appropriate, and commensurate with cost and situational expectations, commencing legal action.
2 Comments
Great resource, Andy. Perfect subway read. Talk with you soon!
At what point could a trade mark be considered lost, if you are a well known national company, and millions of other small companies have used your mark, were is the point that a judge would say its to late?
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