How to Police Your Trademark Rights

The trademark registration process is complex and long, so it can be quite a relief when your registration is finally issued. Nevertheless, trademark protection is not guaranteed simply because you are the owner of a registered trademark.

The USPTO states quite clearly that, “you are responsible for enforcing your rights if you receive a registration, because the USPTO does not “police” the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark.”

Failure to proactively police your trademark and enforce its rights against violators can result in a diminished value of the mark itself and its strength, as well as your ability to exclude others from using similar marks in the marketplace. Widespread use of the your mark without authorization can even cause your trademark to lose significance altogether.

In light of the importance of policing and enforcing your trademark rights, what measures should you take?

Trademark Monitoring Steps

There is no specific required scope for monitoring use of your trademark, but there are a few important practices you can implement to be sure your mark isn’t being used without authorization.

  1. Monitor the USPTO’s Trademark Electronic Search System (TESS) on a regular, scheduled basis.

  2. Set up a Google Alert for the name or use of your trademark.

  3. Make the claim to your mark publicly known by displaying the “Ⓡ” symbol prominently wherever your mark is used.

  4. Establish a trademark usage policy and make sure all of your employees and business partners are aware of it.

  5. Conduct regular, scheduled searches for your mark on a few of the top internet search engines.

  6. Hire a professional organization to keep an eye out for infringing trademarks for you. This kind of “watch” organization reviews all trademarks published for opposition by the USPTO and let you know if any similar trademarks appear. They monitor online and in-store markets, as well as press releases for infringing marks and they also conduct regular searches on TESS for you.

By policing your trademark regularly, you can ensure its lasting value. Of course, if you do encounter an infringing mark while conducting one of these searches, it is also your responsibility to enforce your trademark rights. Please feel free to contact me for advice and assistance if you need help policing and enforcing your trademark rights.

Kelly G. Swartz is a patent attorney licensed to practice in front of the United States Patent and Trademark Office and in the state of Florida.  She limits her practice to intellectual property law including patent, trademark, copyright, and trade secrets.