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DAMIEN Good afternoon and welcome to Vertio Talk Radio. Today we are speaking with Brian Hall. Brian is an attorney with Traverse Legal, PLC, and his practice focuses on trademark matters including trademark clearances and registrations, opposition and cancellation proceedings in front of the TTAB, licensing issues and federal court litigation. Brian also regularly handles domain dispute resolutions, internet law matters, and related business representation matters. Good morning, Brian, how are you doing?
DAMIEN So today we are talking about trademark monitoring so what exactly is trademark monitoring?
DAMIEN How do I know if trademark monitoring is something I should be doing?
BRIAN: Well if you own a registered trademark with the United States Patent and Trademark Office or the USPTO as it's commonly referred to or any other trademark with another government entity, you should definitely be monitoring it. In fact, if you're not currently the owner of a trademark, but believe you are using one, you should look into having a law firm register it for you and then start the monitoring process, because remember that registering a trademark is not the only way to acquire trademark rights. As soon as you are the first to use a distinctive mark in commerce in connection with a particular set of goods or services, you have what is known as common law trademark rights. So in order to get the super rights, you know, as we call them such as nationwide priority, the presumptions of distinctiveness, notice to others, and probably most importantly the possibility of 100,000 statutory damages for willful infringement, you must have filed for and received a certificate of registration from the USPTO for your trademark.
DAMIEN Ok, so once I've registered my trademark and all these rights that you've mentioned, why do I need a monitor?
BRIAN: Well as the owner of a trademark you do have an affirmative duty to protect against the unauthorized used of that trademark by third parties. Essentially your failure to protect your trademark can result in the loss of your trademark rights. So from a legal stand point, the fact that there are filings that must occur between the fifth and sixth year of registration or between the ninth and tenth year of registration in order to maintain your trademark rights, it's also good to have your mark being monitored so you know when those times come up. A quality trademark monitoring system implemented by a law firm, for example, like our own should include these types of calendaring items and other things besides simply going out there and looking for unauthorized uses. At the end of the day, a trademark owner needs to remember that they made an initial investment into protection of that mark by registering it. But a mark has significant value, because it identifies that company as the single source for those particular products or services and from a business perspective a company should want to ensure consumers have an infinity for their brand, become loyal to it, seek it out, and alternately do not purchase from someone else who can be using a confusingly similar mark, or like we talked about before, the actual mark just in an authorized way.
DAMIEN So besides the calendaring what else does trademark monitoring entail?
BRIAN: Well I could tell you what it should entail, and in fact, what Traverse Legal's system entails. First and foremost it should have a dual calendaring system that will allow us to notify you when it's time to make the necessary subsequent filings like I talked about earlier, you know, between the fifth and sixth year, between the ninth and tenth year. You know each ten year subsequent year period, etc. All of those are necessary to retain your trademark registration with the USPTO. So having that calendaring system there that allows us to be pinged when it's time to make these subsequent filings in absolutely critical. Another thing that it should have is an ongoing monitoring of the United States Patent and Trademark Office database for filings that contain the same or similar marks. So for example if we're monitoring Nike, let's just use Nike as an example, if somebody goes out and registers Nike with and "s" or let's even say Mikey or something similar to it, you know, as it pertains to apparel or sporting goods. That's something that Nike would want to be pinged about and learn about so they can determine whether or not it's a problem. So seeing what other filings and what other people are looking to have a trademark for in the USPTO is extremely important. The other thing is it should also monitor online search providers sponsored advertisements and really what that is is if you go to a search engine such as Google and you type in a mark, you know, you get all your natural search results and you also get what's called sponsored listings or sponsor results and you want to make sure that a competitor of yours, for example, is not using your mark as a key word in the text of those advertisements so that they are diverting traffic and potentially business from you. And then finally it should also monitor the domain name registry so as to understand when a similar domain name might have been registered. There's defenses out there and just because someone registers a mark that's similar to yours doesn't necessarily mean it's trademark infringement or cybersquatting. You need to dig deeper and look into the details to make sure there is that likelihood of confusion between your mark and there’s, your product and theirs, etc. But the whole goal of monitoring is being able to be put on notice when that occurs so you can dig deeper and have a law firm look into those issues.
DAMIEN: It sounds like this particular service you're offering has a lot of benefits to it. Are there any more benefits to this? And what something like this cost?
BRIAN: Well in terms of costs, the cost is pretty minimal. To get a trademark registered with the USPTO is approximately a $300 filing fee plus attorney's fees on top of that, you know, monitoring the mark for example is less than that total fee and it's something that you should be doing, because if not, like I said earlier, you could lose your trademark rights. What I like to tell companies is it's part of the cost of doing business. You need to look at your IT including your trademark truly as a line item, an asset that you must not only invest in, but you also must continually invest in to protect it, because at the end of the day your IT is worth more than your brick and mortar in some cases and you need to put the necessary amount of time, effort and money into recognizing that. Like you asked in terms of benefits, at the end of the day the benefits definitely outweigh the costs. The trademark monitoring system will allow the lawyer to notify you when he detects any infringing or unauthorized use of your trademark, especially in connection with the same or similar goods which usually occur with a competitor. So at that point a notice letter can be sent out instead of waiting until it's too late to provide the notice and make them stop what they're doing and you're looking at litigation, because you and I both know when you get to that point it's extremely costly and far more costly than a monitoring system. So getting that early opportunity to send a letter out telling them alright you're on notice that we have trademark rights; we ask you to cease and desist your use or intended use of this mark, you know, being in connection with using it as a trademark, using it as a domain name, etc., can save you money down the line. And also it will be so important for you to understand when those critical time periods come for you to renew your trademark and make sure that you have what you think you have at the end of the day.
DAMIEN: A lot of great information given up today. Thank you very much, Brian, for joining us and letting us know about trademark monitoring.
BRIAN: Definitely, Damien, I appreciate you having me on.
DAMIEN: No problem. You have been listening to Traverse Legal Radio. We've been speaking about trademark monitoring, and we've been speaking with Brian Hall, an attorney at Traverse Legal, PLC. You've been listening to Traverse Legal Radio Tech Spotlight. I'm Damien Allen; we'll catch you next time. Have a great afternoon.
Thanks. I thought once I registered my trademark, I was all set. I did not know I had to monitor third-party uses in order to preserve my trademark rights.
Posted by: Trademark Registration | Wednesday, 10 December 2008 at 04:52 PM
Companies who keep their eyes closed to third party infringement will find out later that they have lost or weakened their trademark rights.
Posted by: Trademark Monitoring | Sunday, 16 November 2008 at 09:45 AM