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Do you need to police your trademark?

Tim Zarley \ December 11, 2018

Do you need to police your trademark? The simple answer is “Yes.”  

While being the first to use a trademark and/or the first to register a mark provides a priority right to prevent others from using the mark, this alone does not guarantee you trademark protection. As a trademark owner, you are responsible for enforcing your rights against others.

Failure to police your trademark not only diminishes the value of the mark as identifying you as the source of a good or service, but it may also restrict your ability to exclude others from using similar marks in the marketplace. Widespread use of your mark without authorization can result essentially in the abandonment of your trademark rights.

How To Police Your Trademark?

While the test for trademark infringement can seem complex, in its most simple terms, you are looking for other marks that are similar in appearance and used with similar goods. While the marks and the goods do not need to be exactly the same, the more similar they are, the more likely consumers will be confused as to the source of the goods.

One place to look is the Trademark Offices’ website, www.uspto.gov, under the Trademark section. While there are different ways to search their database, the easiest is under the “Basic” section where all you need to do is type in your mark or a variation of your mark. You will receive a list of similar marks, some of which are “live” and still active, and others that are “dead” and are either abandoned or have been canceled. For those that are “live” and are similar in appearance, you will want to click on the mark and determine what goods/services are used with the mark. If the goods/services are similar (i.e., wine vs. beer, t-shirts vs. hats, etc.) then there may be a problem. You can also search the internet, again looking for similarity in appearance and use.

Alternatively, you can hire others to monitor third-party trademark use. While these services can be expensive, they do save you the time of conducting the search yourself. If you have a trademark attorney, they likely can provide this service at a more reasonable fee.

If you find a use that you believe is similar to your mark, you most likely will want to contact an experienced trademark attorney for further advice. An experienced trademark attorney will be able to evaluate whether there is potential infringement (i.e., a likelihood of confusion) by evaluating all of the relevant factors. They also can make sure you don’t walk into a problem where it turns out the other person was using the mark before you and can ask that you stop using your mark.

The important thing to remember is that to maximize the value of your trademark, you want to keep others from using similar marks on similar goods. By conducting regular searches and reporting your concerns to an experienced trademark attorney, you are fulfilling your responsibility — ensuring the value of your mark is maintained.

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