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.
Companies should develop an enforcement policy that effectively polices the relevant marketplace, flags infringements and prioritizes them with a goal of preventing consumer confusion and loss of distinctiveness. All of this should be done while not squandering time and resources on potential infringements that do not adversely affect a company’s reputation or revenue.
The key to a cost-efficient and effective trademark enforcement program is early detection. While policing a company’s brand can be a daunting task, particularly in our digital age, there are a variety of services available to simplify policing efforts.
Companies can take the following steps to effectively monitor trademark infringements and misuse:
1. Protect against internal trademark misuse: Policing includes monitoring trademark use by the company and its employees. Proper trademark use by the company itself is the first step to ensuring third parties and the public respect the company’s trademark rights. Develop trademark guidelines for employees and educate them on the importance of proper trademark use. Review the company’s collateral materials, such as advertising, press releases, labels, product packaging and other customer-facing communications before public release to protect against internal trademark misuse.
2. Educate and encourage employees to police: Often the individuals in the best position to police a company’s marks are the employees who are working in the field, attending trade shows, reviewing industry periodicals and studying competitors. Educate them on the company’s brands and encourage them to report any third party misuse or infringements.
3. Subscribe to a trademark watching service: Companies should subscribe to a trademark watching service in which a vendor analyzes newly published trademark applications in the territory of choice and sends timely notice of any identical and confusingly similar marks. Companies such as Corsearch, CPA Global, and Thomson CompuMark are just a few that offer trademark watch services. Watching services are essential tools that must be utilized in order to properly police your trademarks.
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.
Alternatively, an in-house attorney or law firm may manually conduct Internet searches of key terms using various search engines or meta-search engines. Searchers should cover a variety of search terms, including common misspellings and phonetic equivalents, and target social media sites in addition to general websites. Companies may also take advantage of free tools like Google Alerts in conjunction with scheduled manual searching.
6. Monitor mobile applications: Whether a company subscribes to a web monitoring service or conducts searches internally, it should ensure the search covers mobile applications. A mobile app is software available for download directly onto a user’s mobile device or smartphone, such as the iPhone, Android, or Blackberry. Mobile apps provide users with instant information, deals or activities related to the company’s products and services and are very popular among consumers and, unfortunately, infringers. Be sure to monitor the mobile app stores available for popular mobile devices, such as Blackberry App World, Android Market and Apple’s App Store.
7. Monitor media use: Trademark owners should monitor misuse of its marks by the media and consumer publications. If a publication uses a company’s mark inappropriately or generically, it should consider sending a letter to the publication advising of its trademark rights and requesting the misuse be corrected. For wiki-pages, such as the online encyclopedia, Wikipedia, companies can simply correct misuse by editing the entries itself.
Vigilant policing is an essential component to safeguarding a company’s brand against infringers. Ensure your company is taking the appropriate steps to monitor the marketplace and to challenge uses that threaten your company’s trademark assets.