Trademark Monitoring

Thousands of trademark infringement cases are filed in civil courts each year: Recently, the United States district courts alone have seen about 3,000 of them annually. This figure does not include the disputes settled amicably further to sending a cease and desist letter or negotiating a settlement agreement.

There is more hard data on the pervasiveness of counterfeit goods in today's economy and the economic damage they cause. In 2019, the Organisation for Economic Co-operation and Development (OECD) estimated that counterfeiting accounted for 3.3% of world trade, with the problem only getting worse. With fashion as the biggest victim of counterfeiting, infringement of trademark rights is rife in this area. Copying names, logos and other protected trade dress ensures fake apparel — like sneakers, a favorite target for infringers — looks as convincing as possible. However, infringement is not limited to the fashion world, and all industries are affected, including automobiles, IT / new technologies, cosmetics, pharmaceuticals and food products.

Legal protection of your trademarks is only as effective as it is enforced. Therefore, monitoring your trademark is absolutely necessary to uphold your rights. Keeping an eye out for infringement and counterfeiting is just as important to consistent and enduring trademark protection as the renewal process. If you operate in heavily targeted industries like clothing, pharmaceuticals and cosmetics, you could potentially lose a great deal more from infringement than potential sales. Reputational damage caused by imitators or other infringers will definitely lead to economic loss.

It is possible, but it would be very challenging and is not advisable. You would have to comb through public trademark databases on a regular basis, looking for every potentially similar trademark. Then, you would need to consult the relevant trademark regulations to assess if any of these presented enough of a conflict to warrant legal action. Moreover, not every jurisdiction has a public trademark database, making it very hard to get an exhaustive list of similar or identical trademark applications by this method.

Even an organization with an in-house IP management team might not have enough staff to dedicate some of them to monitoring for infringement in this way. As such, you should thoroughly consider the complexities of handling monitoring internally before choosing this option.

Effective monitoring requires a wealth of experience, in-depth legal knowledge and meticulous attention to detail. This level of expertise and responsibility is vital to ensuring that no potential infringements or other conflicts are overlooked. Additionally, a trademark law specialist will be able to advise IP owners on which potential disputes have the greatest likelihood of success and the appropriate course of action.

A Dennemeyer & Associates IP expert will be dedicated to your account, setting up alert systems and regularly checking trademark application filings and official publications for any signs of infringement. Your designated point of contact will have the required knowledge about your businesses and your earlier rights to advise you about risks and possible actions.

Other Dennemeyer offerings contribute to a multi-layered monitoring approach. Our marketplace, domain name and social media monitoring services can uncover potential trademark infringement in these contexts, while our Portfolio Management App assists with anti-infringement by simplifying trademark renewal processes for owners.

Your trademark attorney will report similar trademarks detected by monitoring activities together with your options. It is usually recommended first to try to reach an amicable settlement by contacting the other party. However, in some cases, the opposition deadline is so short, or the infringement is so significant that negotiations are not feasible. In these events, appropriate legal actions will be taken according to your instructions.

Monitoring your trademark will allow you to detect potential infringing trademark applications in due time and proceed with oppositions as needed. If the risk of confusion is recognized by the local authorities, the conflicting trademark will be rejected. Indeed, rather than engaging in open court proceedings at this stage, trademark attorneys present their arguments before the local trademark office.

Potentially infringing marks that have become registered trademarks and used in the trade must be contested in civil court.

Lastly, in criminal cases of counterfeiting, state prosecutors will pursue a conviction, meaning you will likely have little involvement in proceedings after evidence collection.