If you don’t want to conduct a search for your company on the Internet and suddenly discover a competitor operating under a similar name, proactive enforcement efforts can provide peace of mind that the value of your company’s trademarks is being preserved. Moreover, it is the duty of a mark owner to enforce exclusive rights in a mark, or jeopardize the enforceability of the mark in the future. Unchallenged third-party uses of a trademark weakens the strength of your company’s mark as a source identifier.
A trademark watch service is an effective monitoring tool to efficiently identify potentially infringing adoption of confusingly similar marks. Evoke Law partners with Corsearch, a leading vendor of trademark clearance and protection services, to offer a wide range of watch services that fits a wide-variety of business needs.
Below are descriptions of the most commonly utilized watch services:
Domain Name Watch: A Domain Name Watch monitors registrations of standard top-level domain names (e.g., .com, .net, .org, .info) that include the exact mark, as well as other similar variations to catch potential typo-squatters. For example, if someone tried to register www.evokelegal.com, the watch service would alert us to this activity. Purchasing a domain is typically one of the first actions a business takes when it decides to proceed with a chosen brand name, and this watch provides somewhat of an “early warning system.”
Expanded gTLD Watch: An Expanded gTLD Watch has all the capabilities of the Domain Name Watch, but also monitors registrations of generic top level domains (gTLDs) and country code top level domains (ccTLDs) for potential infringement. Using the above example, the Expanded gTLD Watch would additionally alert us to a registration for www.evoke.legal. In addition to the standard top-level domain extensions, in recent years, more than 1200 new extensions have been made available (e.g., .win, .online, .vip, .site, .web, .shop). For a complete list of delegated new gTLDs, see https://newgtlds.icann.org/en/program-status/delegated-strings.
U.S. Comprehensive Watch: A U.S. Comprehensive Watch monitors USPTO applications, state trademarks, domain names, and common law resources for potential infringement. This search is particularly useful for identifying marks in the cannabis industry where many businesses have not applied for federal protection and rather may have acquired common law or state-based rights.
World Watch: The World Watch monitors trademark activity in approximately 200 jurisdictions. This watch report provides timely notification of all potentially conflicting marks worldwide, giving you an opportunity to challenge a potentially infringing application before the mark registers. Challenging marks during the application stage is preferred, because a registration carries the presumption of valid rights and shifts the burden on you to disprove those rights during a challenge.
When a watch summary identifies a potentially conflicting reference, Evoke Law conducts a preliminary assessment to determine what kinds of goods and services are being provided. If the mark and goods/services are related, we then report on the identified reference so you may evaluate whether it presents a concern to your business.
If you decide to further investigate a potentially conflicting reference, we would prepare an infringement analysis, gathering more information about the entity, i.e., where they are operating, how long they have been operating, which owner has priority where, etc. Based on that analysis, we would make a recommendation, perhaps sending a cease and desist letter identifying your rights in the trademark and demanding the potential infringer cease all use of the mark and transfer any associated domains, or initiating an administrative proceeding to cancel or transfer a domain name.
Contact us at iplaw@evoke.law for more information about watch services.
