Trademark Protection: Registration, Defense and Surveillance Actions
The best strategies that you can adopt in order to ensure protection to your brand are basically three: registration, defense and surveillance actions. Eva Troiani law firm can help you in each of these steps. Let’s see.
The first tool for the protection of a brand obviously is its registration that will give you the opportunity to more easily challenge possible imitators, counterfeiters and usurpers of your trademark.
Bear in mind that, if you do not register your trademark, it is not always possible to act on the sole ground of its use and, even when possible, it may be complicated and expensive to collect sufficient evidences to demonstrate your rights
Remind, in addition, to register your trademark in all the States of interest for your business, then not only in the place of production of goods but also in the states where the goods distinguished by your mark will be distributed.
The difense of a trademark
There can be many obstacles during the life of a trademark. Objections can be issued by the office examining your trademark application and oppositions and other kind of legal actions can be filed by earlier trademark owners or by the owners of domain names, companies and other signs.
Your trademark application could be challenged by the Examiner during its examination. The Examiner could issue an official action, granting a term (variable depending on the State) to reply. In such eventuality, we can offer our support in the evaluation of the grounds of the official action and we will give you our opinion about the chance of success. We will write the reply to the office action in order to give you the best chance of success.
Another possibility is that the complaint is raised by a third party (natural person, company or another kind of entity), which, as trademark owner thinking to be damaged from the filing of your trademark application, files an opposition against the registration of your brand.
Also in this case, we will support you first in the examination of the grounds of the opposition, giving you our opinion on the chances of success of the opposition, then we will assure our assistance in the opposition proceedings, both during the phase of negotiation and in the filing of deeds, defences and evidences in support of your brand.
Our firm offers a trademark surveillance system that allows you to be promptly aware of the filing of applications for trademarks identical or similar with yours, for identical or similar products or services.
The monitoring is carried out according to your concrete protection needs and can be limited to Italy, Europe or can cover all the world. For example, if your business is limited to the European and US markets, you can decide to monitor only these two geographical areas: but, if you are instead interested in expanding your business potentially anywhere, then you will take into consideration a worldwide surveillance service.
With this service you can be informed on the filing of potentially dangerous trademarks in time to be able to oppose such trademarks.
On average, the opposition is a less expensive remedy than an action to a Court, but the opposition can be filed within well-defined and generally short deadlines (usually two or three months from the publication date of the trademark, but the term varies depending on the state).
Trademark surveillance system allowed us to become aware, among the others, of the filing of trademarks identical to our client’s trademarks filed by unauthorized agents and distributors, allowing us to stop these exploitation before they can cause more serious consequences from the commercial and image point of view.
Bear in mind that it is always advisable to implement ad active policy in defense of your trademark because the actions filed against the counterfeiters of your trademark contribute to increase the value of your brand: the proliferation of brands similar with yours is never positive, not only because imitations can cause confusion in consumers with your damage, but also because trademarks similar with yours progressively contribute to erode the originality of your brand and consequently, its positive impact on the public.