When you file an application to register a U.S. federal trademark, an employee of the U.S. Patent and Trademark Office (called a trademark examiner) goes through your application (“examines” the application). If your application conflicts with any trademarks that are already registered or applications that were filed before yours, then your application will be refused. You have the chance to submit a legal brief to try to convince the trademark examiner that there is no conflict between your trademark and the pre-existing trademark. If you convince the examiner, then your application goes forward. If you don’t, your application “goes abandoned” (dies; is not registered; has no legal effect).
Once your trademark is registered, you may think you are covered. After all, no one can register a conflicting trademark, because the trademark examiners will see your pre-existing trademark registration and block any new applications. But that assumes that your judgment matches the judgment of the trademark examiners assigned to look at new applications.
Trademark Examiners Don’t Catch Every Conflicting Trademark
Here is the problem:
Suppose you have a trademark registration in place. Another company (maybe a competitor) applies for a trademark that is somewhat similar to yours. Or another company (not a competitor) applies for a trademark that is identical to yours, but is for products that are in a different market.
The trademark examiner doesn’t see a conflict. He lets the new trademark application proceed. But if you had known about this new application, you would have been very concerned, either because the trademark is similar to yours, or the trademark and the products are similar to yours.
The trademark examiner does not report possible conflicts to the owners of other trademarks.
So if you are watching the trademark database for possible conflicts, you have the chance to oppose applications filed by other companies. If you are not watching the trademark database, then a well-intentioned trademark examiner might allow other trademarks to register, which you consider to be a real problem.
And once a trademark is registered, it is harder to cancel. The better approach is to oppose it before it becomes registered, based on your legal rights as the owner of a pre-existing trademark registration.
Why don’t trademark examiners catch everything and block it? There are many reasons. There are over 4 million trademarks on the Principal Register. There are 45 classes of goods and services. There are trademarks in many languages. So the trademark examiner conducts searches, but sometimes their judgment is off, or the way a trademark is classified is wrong, and they miss something. Trademark examiners also have to use their own judgment about what constitutes a conflict. They have the job of protecting existing trademark registrations, but when faced with a well-reasoned legal argument from a new trademark applicant, maybe the examiner won’t protect your rights as forcefully as you would.
A Watch Service Gives You the Option to Oppose
The solution to the risk of new trademark applications is for you to monitor the trademark database yourself. If you see a new trademark that you are concerned about, you can analyze it and decide whether to do something about it.
Several companies provide a service to monitor new trademark applications. They receive government data on all the trademark filings in virtually every industrialized country. If any of the filings match your trademark, you will receive an email with the details.
With this information, you can decide what to do. Your options in the United States include:
- Send a Letter of Protest to the USPTO, asking that the trademark examiner refuse the application based on your earlier trademark rights. (This is only possible if you receive notice about the application right after it is filed.)
- Contact the owner and try to negotiate a resolution (ask them to sign an agreement to limit their market activities or to withdraw their application based on a threatened opposition.)
- File an extension of the opposition period at the trademark office, so that you have more time to negotiate with the owner of the new application.
- File a formal Notice of Opposition at the trademark office. This is like a lawsuit and stops the applicaton from proceeding to registration.
Note: In the Europe Union Intellectual Property Office (EUIPO) and in some countries’ trademark offices, the trademark examiner will NOT block an application because of a conflicting earlier trademark, although they may send a notice to the owner of an earlier trademark if they see a conflict. So if you own trademarks in Europe, it is even more important to have a trademark watch service.
Costs and Types of Trademark Watches
The two major database companies that provide watch services are Corsearch (see www.corsearch.com) and Thomson Compumark (see http://www.trademarks.thomsonreuters.com/). These companies provide many different types of trademark watches. You can receive notices (among many other options):
- When a new application is filed;
- When an application is published (that’s the time when you can formally oppose its registration);
- In one country or many countries;
- For one type of matching products or many types of products;
- For designs or words.
I currently use Corsearch and I like it. I have friends who prefer Thomson Compumark. There are other smaller companies as well.
The cost of a trademark watch service is surprisingly low. You can monitor a trademark, worldwide, for under $ 500. A common service option checks for identical trademarks in all classes of goods and services, and for similar trademarks in a single class of goods and services.
You can set up a trademark watch yourself, or you can do it through your trademark attorney. Your trademark attorney may charge you to check the “hits” that arrive from the database company and give you his opinion about each one. Or your trademark attorney may check the hits without any extra charge, because he receives more work if you decide to oppose someone’s trademark.
A trademark watch service is one of the cheapest and easiest ways to protect your intellectual property.