Police Your Trademarks or They Will Crumble

Monday, December 26th, 2011

Here’s a question for business owners: If you spent a fortune to build a new headquarters for your business, should you save money by not maintaining and securing the property? Would it be better to let the building be looted and crumble?

Of course not, yet business owners commonly choose such false savings when it comes to their trademarks.

A trademark is a product or service name, such as iPad or Google. Usually a company’s name and key advertising slogans also are trademarks.

I’ll leave how to choose a good trademark for another day, but, in a nutshell, you need to choose a distinctive trademark and then have legal clearance research performed to make certain no identical or similar trademarks are being used to sell similar products or services. And then you should federally register it.

Unfortunately, many business owners stop at registration. Big mistake.

Just as buildings don’t maintain themselves, trademarks don’t police themselves. A trademark owner needs to watch for, and take prompt action against, infringements of its trademark. If you don’t, the trademark will weaken and may eventually die.

What does “infringement” mean? Well, as in horseshoes and hand grenades, close counts in trademarks. When you own a trademark, you not only can stop someone from using the exact same trademark to sell the same product or service, but you also can stop someone from using a confusingly similar trademark to sell even a similar product or service.

This means you have a zone of protection around your trademark – your “trademark turf.” How big that turf is depends on several things, such as how inherently distinctive your trademark is and whether you picked a trademark that is unlike any other trademark being used to sell similar products and services.

This is where watching and policing come in. Once you pick and legally clear your trademark and commit to it, you need to immediately begin watching for anyone who invades your trademark turf.

You can perform some watching on your own, but you’ll be taking chances.

If you choose such “poor man’s watching,” you need to watch both for problematic trademark registration applications and for new “common law” trademarks.

Registration does not create trademark rights but just strengthens them. Just using a name for a product or service creates a common-law trademark, so you need to watch for new, similar product and service names.

On the registration side, visit the website of the U.S. Patent and Trademark Office every 30 days and use its database search engine to look for problematic new trademark registration applications.

Also monitor trade publications and advertising outlets commonly used in your industry. Use a search engine every month to look for infringements. Set up Google Alerts on your trademarks.

And don’t kid yourself. “Poor man’s watching” won’t catch many problems, and you may not have the trademark legal experience needed to discern what an infringement is.

For important trademarks, consider purchasing a commercial trademark watching service, which costs about $1200 a year. Because such watching services are tricky to use, you probably should hire trademark counsel to periodically review the results and identify infringements.

And when you find an infringement, you must police your trademark. Once you know of an infringement, you have a limited amount of time to act before you lose your ability to stop it – perhaps only weeks. You usually can’t wait to see whether the infringer will become a serious player before deciding to take action.

Also, it’s easier to stop infringers if you catch them before they become greatly invested in the infringing name.

If you allow several infringements to persist in your trademark turf, your turf will shrink. Other trademarks will be able legally to become more similar to your trademark. If you allow too much trespassing on your turf, eventually your trademark will die.

It all comes down to realistic budgeting. If you build a new headquarters, you have to budget for maintenance and security. Likewise, when building a new brand – a trademark – budget for watching for infringers and shooing them away.

by John B. Farmer
Published in the Richmond Times-Dispatch
© 2011 Leading-Edge Law Group, PLC. All rights reserved.