Years ago, I shared the fictionalized tale of Clint, a TMF client with the registered mark “Embrace” for coconut water. As more clients have asked about proactive solutions to identify potential conflicts, I have updated his story.
Clint was unaware that another company was hoping to launch “Embrace Sparkling” for a vitamin-enhanced kombucha drink. Though Clint thought a Google® alert would catch this kind of thing, it didn’t flag the issue because the applicant did not publicize this potential new brand. Thankfully, active trademark monitoring flagged the problem.
Active trademark monitoring is a method to protect brands by automatically conducting periodic searches to catch similar mark filings. When this similar mark was filed at the United States Patent and Trademark Office (USPTO), an alert was sent to TMF, and we were able to assess the facts and share the information with Clint.
Though Clint was under no obligation to actively oppose a filing or take other action, with my guidance, Clint reached out to the third-party filer informally in order to establish brand boundaries in a cost-effective manner. (Some situations call for more aggressive action such as formal “cease and desists,” protest letters sent to the USPTO, oppositions, and even litigation—a tale for another article.)
While the USPTO is supposed to detect and reject copycats (or anything “confusingly similar”), it’s not a perfect system.
Active monitoring can detect potential problems at the outset—before a third party becomes too entrenched in a brand launch. Besides providing information months before the USPTO examiner even opens the new file, it also follows applications through the process of USPTO approval.
Besides traditional searches which capture similar marks filed in connection with similar goods and services, customized alerts can be set up to monitor specific marks, new filings by specific competitors, as well as related parties such as distributors and licensees.
While setting up free Google® alerts remains highly recommended, active trademark monitoring can nip most potential problems in the bud before they become bigger issues.
TMF is pleased to report that updated algorithm-driven technology have helped reduce the price of active monitoring. We are now working primarily with TMTKO and Markify to provide this service for TMF clients. Monitoring outside of the United States for most major jurisdictions is also available upon request (however countries outside of the US are not consistent in terms of timing of notifications).
If you wish to have TMF actively monitor your trademarks, we will set up customized monitoring, regularly review and scrutinize weekly reports, filter out hits of negligible concern, and inform you of potential issues for a flat annual fee based on the size and nature of your portfolio. Like all monitoring and search services, results cannot be guaranteed.
Email questions to suzann@themoskowitzfirm.com