Brand Protection Today – Article 2: Monitoring – Why, Where and How?

Brand Protection Today – A Series from InfoLawGroup

At InfoLawGroup, we recognize that communication technology is changing at a furious pace and the need to protect brands is greater and more complicated than ever. We deal with these issues in our daily practice and are sharing insights in this multi-part series on Brand Protection. Please subscribe HERE to receive InfoLawGroup Insights. We welcome your feedback too.

Brand Protection Today

Article 2: Monitoring – Why, Where and How?

by Rosanne Yang

As we talked about in Article 1 last week, the first step of brand protection is clearing, choosing, and applying for registration of your brand. Today, we are going to talk about the next step: monitoring your brand – why to monitor, where to look, and what tools are available to help you.

Why Should I Monitor My Brand?

The most traditional reason trademark attorneys will give you is that if you do nothing to enforce your rights and the market runs wild with infringement, generic use of your mark, or just other close uses that dilute the power of your mark, you can diminish or even lose your trademark rights. In addition, there are many more – and very practical – reasons to monitor your brand, many of which have become commonplace with the development of technologies that make it easier for things to go wrong. Maybe people can’t find your brand or are getting diverted to competing businesses or giving up when they find something with a similar name but a totally different product or service. Maybe there are people out there falsely claiming to be associated with your brand or even pretending to speak for your brand. Maybe there are people selling stolen or recalled products. Maybe your brand is being used to coax your customers and even your employees to give up their user names and passwords to nefarious people, or to install malware on their computers because they mistakenly think the source can be trusted.

The reality is, you likely won’t know unless you look. And if you don’t take some basic protections, you may end up having to live with things you don’t like later on, or spending an awful lot of money to the clean up the mess that develops while you’re not watching.

This does not mean that everyone needs to have a world-class monitoring program on the scale of big, international brands, but a little bit of effort can go a long way, especially if you start early. In our next article we will talk about determining the scope of and governing a brand protection program to make it fit your company’s particular needs. For today, though, let’s take a look at the tools you may want in your arsenal.

Where Should I Look and How?

Trademark Office Filings – Trademark watches let you know what is being filed with or approved by Trademark Offices around the world. For a long time, trademark watches were the starting and stopping point of most formal brand protection programs. These are certainly important tools for making sure officially recognized marks and their accompanying uses do not become a problem, but these will not detect what is going on across the Internet.

Domain Name Registrations/Use – There are also tools that monitor the registration of domain names that incorporate or are close to your brand name. Traditionally offered as an add-on service to regular trademark watches, these can be helpful, but are often limited in utility because the report of its registration often comes in before you can see what will be done with the domain; and knowing how it will be used is critical to assessing how much of a problem it is. Look for services that can identify all the potential uses of the domain (like e-mail only), re-check domains on a regular basis, and let you know only if something changes. Also, keep in mind that there are approximately 1500 top level domains (it’s not just .com/.net/.org anymore), more than 200 country-code top level domains, and even more to watch when you consider spaces like .co.uk, so any watch service you use should be capable of looking at a scope that is relevant to you.

Webpage Monitoring – There are billions of webpages out there, so how do you keep tabs on what is going on with your brand across them all? The budget conscious could just up a Google alert or two. Not a Google user? Wanting more than those alerts provide? No problem. There are a variety of other tools with similar functionality, if not cost. Some trademark watch services include general Internet searches (often included in “common law” searches), so you may be able to get this as part of another service. Find a particular webpage that you need to keep an eye on for changes? There are still other services for that, if you don’t want to regularly revisit the site yourself.

Social Media – At the ‘thrifty’ end of things, you can set a regular reminder on your calendar to do a search in each of the platforms for user names that incorporate your brand and for #yourbrand to see what you find. Alternatively, there are a variety of tools on the market that look specifically at social media content – beyond user names and hashtags – to provide you with an idea of what is being said on social media and who is saying it. You can also look to see if social media watching is included in – or an optional add on – to the trademark watch services discussed above.

App Stores – Once again, you can set a regular reminder to search each of the app stores for apps bearing your brand name, but there are a variety of services out there that can do it for you, some of which may be add-on services to otherwise standard trademark watch services.

Marketplaces – From Amazon to Alibaba to eBay, and beyond, it has become ridiculously easy for criminals to sell goods they stole from retail stores, shipping facilities, or the factories that made the products, not to mention outright counterfeits of your goods. Even counterfeit coupons and gift cards can be sold on these platforms. Less nefariously, but no less problematic, so few people actually return or discard recalled items that you may find your recalled product being re-sold in marketplaces long after the recall was announced, which could present safety threats to your consumers and PR – if not legal – liability for your brand. Thrifty companies will manually search key marketplaces regularly, but for those wishing to automate or increase efficiency, marketplace watches are available from a variety of companies.

Content – Is your brand’s bread and butter the content it delivers? If so, you may be able to identify copied content via one of the above methods, but you may also find it helpful to use a service that watermarks your digital content, or otherwise has ways to identify it, and then looks for the content to show up in places it shouldn’t.

Keep in mind that you may need multiple tools, even within a category, to achieve the type of coverage you are looking for. And, in addition to considering what kind of watches to put into place, you should consider how the tools work with your particular workflow (for instance, a watch service that delivers to your inbox as an attachment with no live links may work for some, but probably not for others). Finally, the tools change rapidly with advancement of technology, consolidation in the industry, and industry disruptors, so it is worth revisiting the options every now and again. We will discuss one such technology change and its potential to impact brand protection later in our series, as we tackle blockchain.

It may seem like monitoring could be a budgetary black hole, but fear not. With mindful structuring and governance, it is possible to develop an approach that fits your business, your risks, and your budget. For more on that, please look for our Insights post next week.

Originally published by InfoLawGroup LLP. If you would like to receive regular emails from us, in which we share updates and our take on current legal news, please subscribe to InfoLawGroup’s Insights HERE.