IP: 7 tips to policing trademarks

The key to a cost-efficient and effective trademark enforcement program is early detection.

Trademarks are valuable corporate assets and, in some cases, represent a significant percentage of a company’s worth. For instance, Brand Finance, a consulting agency specializing in brand valuation, reports that brands such as Nike, Sony, Barclays and Avon represent more than 50 percent of their respective company’s total enterprise assets—Avon’s brand being valued at 78 percent.

To further illustrate the value of a strong trademark, consider that in 2009, Systemax Inc. purchased Circuit City’s trademark and website for $14 million in a bankruptcy auction. In order to preserve the value of a company’s trademark, vigilant policing against infringement and misuse is critical. Indeed, a mark may be deemed abandoned if infringement becomes prevalent and unchecked.

4. Order a periodic trademark clearance search report on key terms: While companies traditionally order comprehensive search reports in order to assess the availability of a proposed mark for use and registration, such reports also can be useful tools to monitor the marketplace for possible infringements. Reports include a large amount of information from sources such as state and federal trademark registers, domain names, trade dictionaries, telephone books, business names and common law trademarks. In addition, trademark clearance search vendors can easily search variations of the mark as well as the identical mark. There are a number of experienced providers of comprehensive search reports such as Corsearch, CPA Global and Thomson CompuMark.

5. Monitor the Internet: In today’s digital age, a company’s trademark policing program must include monitoring the online world. An easy and efficient way to monitor online trademark abuse is to subscribe to a web monitoring service, such as Mark Monitor, Cyveillance or BD Brand Protect. Often these vendors use algorithms to review millions of webpages, auction sites and social media sites to identify potential infringement and brand misuse. In addition, these vendors offer domain name watch services that specifically monitor domain name registrations that include the company’s mark or close variations thereof. Most web monitoring services offer a free demonstration and some may be willing to offer a limited free trial.


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Michelle Miller

Michelle A. Miller is a lawyer with Brinks Hofer Gilson & Lione.

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