Treat Your Trademarks Like the Asset They Are: Why Trademark Owners Need to Monitor Their Trademarks

The discussion around trademark rights often focuses on getting a registration. Many of us have shared a name, logo, or brand idea with a friend only to hear them say “you should trademark that!” in response. It’s not always bad advice. Of course the idea needs to be eligible for trademark protection, but assuming it is, a trademark registration is a powerful tool in building your intellectual property (“IP”) rights and protecting your brand. 

Understanding your trademark rights and how to secure federal registration for them is valuable, but understanding your trademark responsibilities is important too. Below we discuss trademark monitoring and why trademark owners should take care to do it.

Trademark Monitoring

Trademark monitoring is the habit of watching the marketplace (which could mean anywhere goods and services are sold, whether that is the general world of commerce, a specific store or retail shop, or a specific online platform that brings buyers and sellers together) for name, logo, and other trademark use that could infringe on your rights. With established trademark rights, you have the ability to stop others from using a similar mark in connection with related goods and services. Remember, though, this does not extend to those who began using an arguably similar mark before you (known as “senior users”), it only applies to users who come after you (known as “junior users”). The thing about trademark infringement is that many trademark owners have no idea if and when it happens. A small pastry shop owner in Philadelphia might not know that there is a West Virginia bakery operating with a very similar name. But if the Philadelphia pastry shop is monitoring the marketplace for infringing uses, it can identify the infringement and take action.

Keeping an eye on the Trademark Office is another part of trademark monitoring. Unlike the marketplace, the Trademark Office has a process by which examining attorneys review and reject applications that are too similar to existing registrations. This, however, is not a guaranteed process. While examination procedures are somewhat standardized, analysis among examining attorneys can be very subjective and as a result some applications with arguably similar marks make it through examination.

A(n Intellectual) Property Owner’s Responsibility

Consider owning real property and what it takes. If you own land, you are responsible for surveying the land, paying taxes, making repairs, maintaining insurance, and making sure that it is physically secure. Home ownership requires much of the same. If you do not take these steps to protect your land and home, it means that the property could be damaged, stolen, condemned, claimed by someone else, or lose its value. Trademark rights can be viewed in the same way.

Trademark owners have the responsibility to enforce their rights against infringing uses. This is because failure to do so could damage your trademarks and their value. A property owner would not just allow someone to come onto their property and put up a building, just like a homeowner would not allow a random person to move in. If a trademark owner does not protect her rights against infringers, the ability to enforce those rights weakens. Let’s take squatters for example. Many of us are familiar with the idea of “squatters’ rights” and many of us have heard stories of someone moving into a vacant home and somehow getting the legal right to stay there, even without the owner’s permission. At the core of these rights is the owner’s responsibility to keep an eye on the property. The longer someone stays on your property, the more difficult it can be to remove them. These property principles are so much a part of IP that there is even the concept of “trademark squatting,” which is the act of applying for and registering established trademarks, usually in an attempt to sell it to the actual brand owner.

When running a business, it can be easy to overlook the effort, time, and resources it has taken to build your brand. Obtaining a trademark registration is one part of protecting those efforts while monitoring in enforcing those rights is another.

Brand Integrity

An aspect of trademark rights that tends to get bogged down under legal principles and procedures is the idea of maintaining brand integrity. Trademark owners can easily see the financial costs in obtaining, maintaining, and enforcing trademark rights, but the impact of maintaining brand integrity is sometimes not as easy to measure.

Using trademark rights to stop infringement is also about protecting how consumers know and interact with your brand. Consumers may come to know a particular quality or characteristic of your business that makes them loyal customers. Knowing that a restaurant uses locally sourced ingredients or that a clothing company uses high-quality fabrics is part of what builds goodwill with some consumers. This can make a business stand out in the marketplace. To that end, inferior products, poor customer service, and unsavory business practices can easily latch onto a brand and tarnish its goodwill. All too often, this happens through counterfeiters and brand impersonators offering a subpar product or service while using an established trademark. Monitoring and enforcing trademark rights is a way for brand owners to protect their reputation in the marketplace.

Finally, trademark monitoring acts as a way to protect consumers. This is especially the case when the consumers are a vulnerable population such as children, the elderly, and pregnant people. A brand can communicate that a product is safe to drink or that a service provider handles sensitive details with care. This aspect of brand recognition goes not only to a brand’s bottom dollar but also to the safety, comfort, and well being of consumers. For many business owners, these considerations are an integral part of operating their business as well serving their communities.

Responsible Enforcement 

It is important to remember that trademark monitoring and enforcement looks different for every business. Some trademark uses may be similar but can coexist in the marketplace without causing consumer confusion. Some brands may take the opportunity to collaborate with arguably similar brands and form new business growth opportunities. In an ideal marketplace, there would be more cooperation than competition, but the reality is that sometimes people take advantage of others. Monitoring and enforcing your trademark rights is not just a useful tool against this, your ability to enforce those rights in the future really depends on it.

Trellis Legal offers trademark monitoring subscription services. Learn more how we could help you better protect your trademark.