Clint, a TMF client with the registered mark “Embrace” for a coconut water was unaware that another company was planning to launch “Embrace Sparkling” for “vitamin-enhanced carbonated water.” Though Clint thought a Google® alert would catch this kind of thing, it didn’t detect the duplication. 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 registrations. When this similar mark was approved by the United States Patent and Trademark Office (USPTO), an alert was sent to TMF, and we were able to assess and share the information with Clint. While there’s no obligation to actively oppose a filing or take other action, with my guidance, Clint reached out to the third party filer in order to establish some brand boundaries.
While the USPTO is supposed to reject copycats, it’s not a perfect system. Like the case above, which reflects a slight modification of facts in order to protect client confidentiality, a confusingly similar mark can be approved by the USPTO and may cause real damage to your brand. While setting up free Google® alerts is still highly recommended, using active trademark monitoring to detect new filings at the outset is a great way to nip potential problems in the bud. It’s also a good way to keep an eye on filings by authorized users and related companies (e.g. distributors and licensees) as well as to evaluate competition and how the marks they choose might impact your brands.
TMF is pleased to report that new technology and competition have helped reduce the price of active monitoring. We are now working with Markify to provide this service for TMF clients. Like all monitoring services, results are not guaranteed, but it is a strong, algorithm-driven and cost effective option.
If you wish to monitor your trademarks, TMF will set up monitoring through Markify, regularly review and scrutinize weekly reports, filter out hits of negligible concern, and inform you of potential issues for a flat fee. Clients will be contacted shortly with pricing and additional details. Email questions to firstname.lastname@example.org