You have spent hours to develop the perfect brand or trade name, spent time and funds to register your mark with the U.S. Patent and Trademark Office and now you think you are done. But, in trademark parlance, a brand owner has a duty to "police" the mark to ensure that the mark does not become generic, weak or unintentionally abandoned.
What Is This Duty to Police?
The strength of a trademark lies in its ability to uniquely identify the source of a product or service. In order to maintain this strength, third parties must not be allowed to use your trademark (except in limited ways, such as legitimate comparative advertising). The activity of seeking out infringements and misuses is called "policing." Policing includes many activities, but most commonly includes the monitoring of your licensee’s use of the mark to ensure it is being used only as allowed in the license. It also includes monitoring for gray market and counterfeit goods and monitoring whether others are using the brand on the internet or elsewhere to provoke interest in their products or services instead of yours.
U.S. law imposes a policing duty on every trademark owner. The law warns that a trademark owner who does not undertake "reasonable enforcement efforts" can risk having the trademark deemed weak or even, in the extreme case, having the trademark become generic or declared unintentionally abandoned when it fails to adequately function as a source-identifier. Unfortunately, the law offers relatively little guidance on what extent of policing efforts are "reasonable efforts." There is no rule to determine what is adequate and reasonable. Courts typically look at the trademark owner’s policing efforts in the context of the circumstances and the trademark owner’s resources. The uncertainty in this regard has grown over the past decade because relatively few courts have grappled with the new types of trademark infringements (other than domain name disputes) and new types of misuses on the internet.
What Exactly Is a Trademark Owner Required to Do?
The answer to this question lies in a balanced approach, somewhere between committing extraordinary resources to battling every use of your company’s trademark in any context, and responding merely to those misuses that passively happen to come to your company’s attention. This balance also takes into consideration the relative importance of the mark, as both a practical and legal matter, with more important marks requiring greater policing efforts. Trademark policing is more like a marathon than a sprint: an on-going, long-term effort.
Almost every trademark owner is familiar with the garden-variety domain name dispute over use of a trademark in one of the generic top-level domains, also know as gTlds, .com, .net and .org. Now, the scope of these problems is about to change again with the recent introduction of the new gTlds .info and .biz (and .name not too far behind). There is also an alternative network of sites being launched via new.net (available extensions include .shop, .xxx, .llc, .llp, .inc, among many others). New.net claims that more than 70 million browsers are now enabled to recognize new.net names, and they have partnered with leading internet service providers to recognize these alternative names at the root level. In view of these developments, we anticipate a new round of battles with cybersquatters and typosquatters.
In addition to domain name problems, we routinely see infringers who use client trademarks (identical and misspelled) in hidden text code to attain higher confidence ratings in search results; suppressed source code; in file or subdomains; or, more blatantly, use of the trademark in the title of the site, unlicensed uses of logos on individual pages and the illegitimate purchase of keywords. The internet is also a ripe market to discover counterfeit goods and sales outside of authorized distribution channels.
Keeping in mind that enforcement is more like a marathon, we recommend that trademark owners undertake a policing program that is regular, comprehensive and prioritizes problems within a budget. To help our clients maintain control over their corporate images and to help identify the types of problems mentioned above, McDermott, Will & Emery has developed a unique internet-watching protocol called the McDermott, Will & Emery Internet Surveillance Service that can be conducted monthly, quarterly or yearly. After the surveillance is performed, your lawyer will review the results to eliminate non-problematic uses and to prioritize action in accordance with an enforcement protocol.
What Are the Internet Surveillance Services?
The MW&E Internet Surveillance Service consists of two parts. The first part is the actual internet surveillance and reporting function. The second part is the enforcement protocol.
As part of the internet surveillance product, we develop for each client a unique search protocol that is based upon an understanding of the client’s portfolio and upon the areas that are of concern to the client, which may consist of trademark or counterfeit goods, as examples. The McDermott, Will & Emery search protocol results in a list of potential problems that is reviewed and prioritized. The end result is an electronic report with hot links to the problem on the internet, a description of the problem, an identification of the owner of the problem (which usually takes some independent investigation in the instances of redirect or false registration information) and a recommended action. At the same time as the report is being prepared, we collect the hard and electronic evidence with a date stamp for use during the enforcement stage.
The second part is enforcement. We develop a priority matrix for each type of problem and, in conjunction with this, we develop template letters to serve as the response for each problem. We have found that a substantial percentage of problems are resolved soon after a letter is sent. Not only does this eliminate a problem that is harming your trademark, but also the action itself can serve as evidence of a reasonable policing program.