Given the dramatic increase in the number of cease and desist letters I’ve been writing for clients who have discovered companies ripping off their brands, I thought it timely to revisit the discussion surrounding trademark monitoring. We talk a lot about the difficulties of obtaining trademark protection for cannabis-related marks, but often forget that the battle isn’t over when a registration issues. Even after you have completed the onerous process of prosecuting (registering) your trademark application, there is no automatic guarantee that others won’t attempt to use your mark, or a confusingly similar mark. Enforcing your trademark requires constant monitoring to keep would-be infringers at bay.
Although the USPTO will vet your application against marks that have already been federally registered and will issue your trademark registration if there are no confusingly similar registered marks, the Office will not actively monitor or seek out infringers, nor will they prosecute infringers. Monitoring for and prosecuting infringers is therefore your job, as the trademark owner. If you do not monitor and enforce your trademarks, there will be nothing stopping other companies from adopting your name or logo, or a variation thereof, for their own use.
Infringing companies may violate your ownership rights for a variety of reasons: They may be ignorant of the rules around copying, or they may feel like the risk of litigation is worth taking given the potential upside associate with your proven name or logo. An infringing company may also have had a similar idea to yours, but failed to secure a federal trademark registration due to likelihood of confusion with your mark. In any case, if the infringer is using your mark on a subpar product or a product your company would rather not be affiliated with, that can be damaging to your brand. Thus, vigilance on the part of a trademark owner is key to preventing infringement.
Below are a few basic tips for monitoring potential infringers of your mark:
- Regularly search the Internet. This is common sense. Perform Google searches for your trademark, and for your logo if you have one. Google Alerts comes in handy here as well. Set up an automated search and receive email alerts every time new pages containing your mark are indexed.
- If you really want to delve into things, search the Trademark Electronic Search System (TESS) on the USPTO website. This search engine allows you to search the USPTO’s database of registered trademarks and pending applications to find marks that may be similar to yours. Pending applications may give you some insight into companies that are using or attempting to use marks that are similar to or the same as your own. For additional information on searching the USPTO’s database, which can get a bit complicated, go here.
- Aside from self-monitoring, there are many companies and law firms that provide trademark monitoring services for their clients. These companies conduct regular monitoring searches for your mark. These services can be particularly helpful if you hold trademarks in multiple domestic and international jurisdictions.
If you do encounter a company you believe to be infringing your trademark, you should contact a cannabis intellectual property (IP) attorney right away. An experienced IP attorney can walk you through your options for dealing with an infringer, including cease and desist letters, settlement negotiations, and ultimately, litigation if necessary.