A Look at Brand Lifeguarding: Trademark watching best practices

Guest post by Tore DeBella, Trademark Associate with Drinker Biddle

With trademark infringement and misappropriation on the rise worldwide, trademark professionals are facing unprecedented challenges in protecting the brands in our care. The good news is that adhering to some fundamental techniques for safeguarding those brands—including trademark watching—can help mitigate the risk.

That was the overriding message in a September 6, 2018 webinar entitled Brand Lifeguarding: Trademark Watching Best Practices hosted by CompuMark and featuring myself and Abby Remley, trademark paralegal for Procter & Gamble.

If you weren’t able to attend the live webinar, you can access a recording here: https://compumark.com/webinar-brand-lifeguarding-trademark-watching-best-practices/

As noted in the webinar, trademark watching is the first line of defense, providing critical information for effective, early trademark enforcement. “Early” is a key word here. Abby and I both discussed the importance of identifying potentially infringing trademark applications as early as possible. One strategy I use is to implement a time-of-filing watching service (known as a “Pending Application” watch in the USA).  This generates watch notices when applications are filed, not when they are published. This provides an “early warning” of a trademark that could be confusingly similar to the watched mark, giving more lead time to strategize a response than the 30 days typically afforded to file an opposition with the trademark office following publication.

This early notification allows strategies like filing a letter of protest during the U.S. application examination process. This can potentially contribute to the application being rejected by the Trademark Office examiner, enabling you to avoid having to oppose the application after it is published, saving time and money.

In the webinar, I also offered tips for setting up and maintaining watches, establishing guidelines for prioritizing and evaluating watch notices, and important considerations for enforcement, should the mark owner decide to act.

While I was able to bring a law firm perspective to the topic of trademark watching, Abby Remley provided the perspective of a legal professional inside the corporation, including some fascinating case studies illustrating the thought process when assessing whether to enforce rights in well-known consumer brands.

Thanks to CompuMark for hosting the webinar on this important topic—and to the more than 300 people who attended, including those who submitted some great questions. We hope to address some of those questions in future blog posts. Stay tuned!

Note: CompuMark is a trademark watching service provider to the author and other Drinker Biddle trademark lawyers. Neither the author nor Drinker Biddle was compensated for this article or for the author’s participation in the September 6 webinar. 

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