Updated: Feb 17
During my first job after law school, the Trademark practice group of the very large firm I worked at brainstormed one day on how to add joy to our practice. We joked that we could have a little party each time a client achieved registration of their word, phrase or design with the U.S. Patent and Trademark Office.
In reality, some clients probably do celebrate this milestone, or frame their certificate of registration. Trademark registration really only represents a road marker, though, not the final destination. Once a trademark registration is issued, it’s up to the client and his or her lawyer to police the mark. Most opt to use a third-party watch notice service that informs them any time a similar mark pops up with the Patent and Trademark Office. Alternatives include periodically checking the PTO website themselves with Boolean searches, or performing internet searches for the word.
If monitoring a trademark registration reveals another mark that appears that sounds, looks, or means something a lot like the existing registration and applies to similar goods or services, we then evaluate what action to take. We can take formal or informal action, depending on the client's timeframe or budget. Options include letters of protest, cease and desist letters, Trademark Trial and Appeal Board proceedings, or filing a lawsuit in court. If you have a trademark registration, great! Just don't expect the Patent and Trademark Office to enforce it on your behalf.