Trademark Watch Service
1. What is a trademark watch service ?
Let's start with the basics. A trademark is a insignia, logo, or any sign that represents your goods or services that are offered in the “stream of commerce.” That means, a trademark represents your “brand” under which you are selling goods or services. However, registering a mark is only one aspect to protect a brand. After registration, one also needs to make sure that no one else is able to register a similar mark. In other words, after you register your brand it is important to monitor whether anyone else attempts to file an application that is similar to your registered mark, in order to prevent them from taking advantage of the good-will created by your usage of your brand. This is done by filing an opposition (or letter of protest) against an application for the new mark by a competitor.
2. Why would one oppose the registration of a new mark?
The most common reasons to oppose another's application are (i) likelihood of confusion, (ii) dilution of a brand, (iii) Fraud and deceit, and (iv) lack of bona-fide intent to use of the mark. Likelihood of confusion occurs when the new mark is similar or identical to an existing brand. The new mark would thus cause people to believe that the goods and services provided under the new mark belong to the owner of the existing brand.
However, the new mark does not need to be similar of identical to the existing registered trademark. In some cases, addition of words can cause dilution of a brand. This means that registration of the new mark would reduce the recognition of the existing brand due to the incorporation of the famous words (e.g., Nike®, Coca-Cola®). Famous does not necessarily mean globally famous, but it can be famous in a particular niche segment.
Fraud and deceit occur when one attempts to register a new mark to take advantage of the popularity of an existing trademark in order to misrepresent the new product as the existing well recognized product (think spelling variations).
Lack of bona-fide intent means that the registration of the new mark is being performed to "squat" on the name, without the desire to actually use the trademark in the stream of commerce.
As can be noted, there are some overlapping aspects in each reason listed above. Therefore, one can generally oppose a trademark for more than one reason.
3. But won't the examiner prevent another from registering a mark similar to mine?
Not necessarily. There are millions of registered trademarks within some 50 classes. While examiners try their best to prevent registration of marks similar to those that have already been registered, reasonably, an examiner cannot consider each and every registered mark. More often that not, at least a few "slip through the cracks."
Furthermore, examiners, even if they find a some-what similar mark, are not vested to consider each and every aspect to determine whether a new mark will be problematic for the existing brand or trademark. The examiners are also not aware of external factors, such as, the popularity of a brand in a niche field, good-will created by a brand name, etc..
Not surprisingly, the USPTO expects trademark owners to monitor whether registration of a new mark would cause any issues or problems to their existing brand-names. To facilitate such monitoring of new marks, the USPTO publishes the new marks (that are about to be granted) in a gazette for an opposition period of 30 days. If no opposition is filed during the prescribed time period, registration of the mark is allowed. A trademark watch service assists, partly, in determining applications that have been published for opposition so that an opposition can be filed by one who generally believes that their rights would be harmed if the new mark is granted registration.
4. What else can a trademark watch service assist with?
Filing an opposition is similar to litigation and can get expensive. A monitoring service can thus also assist with determining problematic trademark applications early on (as soon as they are filed). The owner can then choose to file a letter of protest with the attorney examining the new mark and make them aware of possible issues that may arise if the application for the new mark is granted.
Chhabra Law, a San Francisco based law firm, provides the cheapest trademark watch service in the US for a low annual fee of $399. We will provide a list of problematic applications of new marks as soon as they are filed or published for opposition, depending on your preference. We can assist you with federal trademarks with the USPTO as well as California trademarks.
We have a very good success rate in reaching acceptable solutions for our clients -- even in matters where imminent litigation was threatened by large law firms that were hired by the other party.
Contact us for a 30 minute free consultation