by Traverse Legal, reviewed by Enrico Schaefer - March 18, 2011 - f. Trademark Availability & Monitoring
Welcome to Trademark Law Radio sponsored by Traverse Legal, internet law attorneys specializing in intellectual property law. In this episode, Trademark Attorney Brian A. Hall discusses the benefits trademark monitoring for protection against cybersquatting and trademark infringement.
Attorney Brian A. Hall: Now that you’ve successfully acquired a trademark registration, it is important to recognize that your work is not done. You have an affirmative duty to protect against an unauthorized use of your trademark. Your failure to do so can result in you losing your trademark rights. Therefore, trademark monitoring is an extremely important part of all trademark owners’ continuing obligation to protect their trademarks. Trademark monitoring not only protects the trademark, but also ensures the value continues to be applied to that trademark.
Most owners don’t have the resources available to monitor trademarks on their own. For example, they can’t constantly be watching the United States Patent and Trademark Office for new applications or registrations that infringe upon their trademarks. Moreover, they can’t be constantly monitoring domain name registrations to ensure that there aren’t new domains being registered that incorporate the same or similar trademark originally claimed by the owner.
Finally, they can’t perform daily searches on various search engines, such as Google, to make sure that there aren’t unauthorized uses by third parties of their trademarks on websites, in online keywords or the like. Therefore, use of a monitoring service can be very helpful. Most monitoring services will perform the necessary searches on the USPTO database, domain name registrations and search engines to identify potentially problematic trademarks. If a potentially problematic trademark is identified, a trademark litigation attorney can provide the proper advice regarding how to handle it. This may include something as simple as a notice letter advising the third party of your trademark rights, or it may become more serious and require a cease and desist letter. Ultimately, if all else fails, a trademark owner may have to make a decision whether or not to pursue trademark litigation, cybersquatting litigation, domain name dispute resolution policy arbitration or related procedural matters in order to resolve the unauthorized use.
Remember, while a trademark registration provides significant value to your brand, you would not want to lose those intellectual property rights because of your failure to advise a third party of their unauthorized use. As such, trademark monitoring is just as critical to a trademark owner as the initial acquisition of a trademark registration.
As a founding partner of Traverse Legal, PLC, he has more than thirty years of experience as an attorney for both established companies and emerging start-ups. His extensive experience includes navigating technology law matters and complex litigation throughout the United States.
This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.
