When adopting and using a new trademark, knowledge is power.

Understanding and implementing best practices for trademark adoption, use and maintenance can help minimize future risks. Use and successful registration of a mark is only the beginning. A trademark owner has a duty to monitor and enforce its trademark or risk narrowing the scope of its rights to the mark.

To maximize the value of a trademark and ensure its long-term success, investing in these best practices through the life of a trademark, can help to protect what is often one of a business’s most valuable assets.

Three Ways to Monitor Your Trademarks and Minimize Future Risks

A trademark should be secured and protected just as any tangible business asset. It is important to ascertain any risks that a trademark may face from similar marks in the marketplace, secure a federal trademark registration for the new mark, and enroll in trademark watch services to address and enforce against infringement early.

1. Conduct Trademark Searches

Before adopting a new trademark, conducting a search is vital to ensure your mark does not conflict with any existing marks. There can be a significant investment of time and money in adopting a new trademark and developing the brand’s identity. A search can provide the knowledge needed to avoid potential trademark infringement and from being on the receiving end of a cease and desist letter.

For most, the first step in a search may be plugging the mark into a search engine to see what is on the Internet. However, a search conducted to clear a new trademark for use is much more nuanced. A search for existing US federal trademark applications and registrations and unregistered uses of identical or similar marks is important. If the new mark is intended to be used in multiple countries or jurisdictions, the search should include registrations and uses in those areas as well.

A trademark serves as a source identifier for potential consumers. If there are other similar trademarks used in the marketplace already, this can create potential confusion among consumers and can negatively impact a brand’s identity and reputation.

It is important to ensure that your mark does not infringe on any third-party trademarks to avoid the costs and loss of trademark rights that could come from future legal disputes.

2. Obtain Protection – Register Trademarks

Once a new trademark has been cleared through a comprehensive trademark search, the next step should be to apply for trademark registration. There are two main considerations when seeking trademark registration: (1) in which jurisdictions should protection be sought; and (2) the goods and services that should be included on the application(s).

Trademark rights are not automatically global; each country has its own rules and registration process to secure the protection of trademarks. It is important to consider all markets in which the mark may be adopted. If the goods and services offered under the mark will only be provided in the United States, a US federal trademark registration may be sought. If future expansion plans include other countries or jurisdictions, securing registration in these areas should be considered at the outset. Different countries have their own rules for securing trademark protection, with some adopting a “first to file” approach. This means the first filer of a trademark in a particular country may have senior rights to the mark, regardless of who has used the mark first in that jurisdiction. If there is a future plan to enter into a jurisdiction with these rules, securing protection early may avoid expensive litigation or loss of rights in the future.

Trademark rights are not automatically broad in scope. A trademark registration provides protection for the mark in relation to the specific goods and services listed on the registration. For example, a trademark registration for ACME for t-shirts does not automatically prevent a third party from registering the ACME in relation to various toys. When preparing a trademark application, it is important to consider including not only goods and services that may be initially offered under a new mark but also those that may be offered in the near future. In the US, goods and services that are not offered in the marketplace yet when the application is filed can be included on an “intent to use” basis. This allows the applicant time to launch the products and submit proof of this later in the application process. This approach may prevent another party from securing registration for the same mark for these intended areas of expansion.

3. Monitor Competitors and Marketplaces

Once a new trademark has been cleared and registration has been secured, there is an ongoing duty to monitor for any use of the mark by others in the market. Trademark watch services are a great way to monitor for any potentially infringing uses of the mark by competitors. These services are typically offered on an annual plan and will search trademark registers and online uses of the mark. This can help identify potentially infringing uses quickly and early. Once an infringing use is identified, it is important to act quickly to address the infringement. Usually, this can mean sending a cease and desist letter to the third party.

If infringing uses are not addressed and allowed to continue, there is a risk that trademark rights may be weakened and non-action may be interpreted as acquiescence.

It is important to take steps to protect a trademark from the outset and throughout its life. Implementing and budgeting for a long-term trademark protection strategy that includes trademark clearance, protection, and regular monitoring can help build a strong trademark portfolio and business.

Keep Your Intellectual Property Protected

Developing best practices for a trademark protection strategy involves consideration of current and future business plans, budgets, and US and global trademark laws. Consulting with an experienced New York City Intellectual Property attorney can be helpful in developing a plan to adopt a set of best practices that works for a specific business’s needs.