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Trademarks & Domain Name Monitoring

The ability of a company to maintain strong and defensible trademarks and domain names depends on active policing and surveillance of these assets.

Part of the value of trademarks and service marks comes from their exclusivity and the fact that others cannot use confusingly similar marks on related goods or services. In order to preserve these rights, it’s important to monitor the activities of others to make sure the marks they use are suitably differentiated. This can be done by watching for the use of similar marks by competitors or by utilizing a “clipping service.”

A “trademark watching” service and periodic trademark searches to monitor the state of the trademark register is advisable for important marks. This may include searching on the Internet. If competitors or others are using confusingly similar trademarks, it may be essential to take action to prevent infringement and the possible narrowing of the company’s rights.

The trademark coordinator of your company should work with outside IP counsel to arrange for and conduct trademark and domain name watching with the following steps in mind:

  • Identify your company’s strategic trademarks to be monitored. These should at least include key brand names and other marks that have heightened value in their ability to identify company products.
  • Communicate the identified trademarks to the outside IP counsel.
  • Together with your outside IP counsel, determine an appropriate scope of monitoring for the identified marks. Identify the markets, geographic regions, and key competitors.
  • Receive reports from yout outside IP counsel on a periodic basis for review

As needed, your company will be able to engage in trademark or domain name enforcement actions. Accordingly, any suspected violations of your company’s trademarks or domain names should be brought to the attention of your legal team immediately.

Note: A failure to police and protect company trademarks can have a negative impact on the future enforceability of those trademark rights.