Trademark Protection: The Necessary Evil of Analytics

At the start of the 3rd quarter, marketing plans and budgets will be made, debated and negotiated for 2009. Marketers, executives and business owners need to consider not only how marketing and advertising strategies from the past have performed but also what important elements are missing from your plan. One often overlooked item in online marketing plans is trademark monitoring services, as a part of your comprehensive analytics package.

Many businesses feel that because there are legal protections given to trademark holders, the law is the best and most appropriate recourse if they ever have an issue with their trademarks—whether online or off. But, we still lock our homes as a first line of defense even if we know the law will deal with anyone who would walk in and take our things—and the same theory applies to your trademarks online.

Litigation should be a last resort and with monitoring services you can keep track of the use of your marks online so you can identify any infringing uses early. This gives you the opportunity to employ other methods to solve the problem before it has major detrimental effects on your business.

In an ever-changing legal landscape, law and precedent affecting trademark protection online is constantly in flux. This can mean long and complicated litigation and unpredictable results. Despite the uncertainty, more and more companies are using lawsuits as their primary plan for trademark protection—at a high price. The cost of using lawsuits as a trademark protection strategy is more than tens or even hundreds of thousands in legal fees and years of litigation—you put your trademarks, brand and business at risk.

Consider one example of a large company using litigation to protect their trademark: American Blinds & Wallpaper Factory.

In 2004, American Blinds asserted a claim against Google for, amongst other things, allowing other companies to buy ads on American Blinds’ trademarks (American Blinds, American Blind). After three and a half years of litigation, likely hundreds of thousands in legal fees and thousands of hours of time devoted by company executives and employees, the court’s decision puts American Blinds in a position much worse than when they began—aside from a huge loss of time and money.

Because the court is asked to decide issues of American Blinds trademarks, they’re first required to analyze whether the marks are protectable. In the case of American Blinds, the court decided that American Blinds has no trademark rights in their terms—a decision that will greatly affect their ability to protect their brand and their trademark in the future. Not only does American Blinds fail to get the protection of their marks that they were seeking in Google’s keyword bidding, they also essentially lost the protection of their trademarks entirely.

Though trademark monitoring services can’t guarantee you can avoid all trademark litigation, it can let you know right away when your trademarks are being used by others—before significant damage to your brand and your bottom line is done—and allows you to utilize other options to manage and protect your trademarks.

Many times, simply contacting the company or individual using your mark or sending a letter or notice will be sufficient to stop any infringing uses of your trademarks. If litigation became a consideration, snapshots of infringing uses and time/date stamps offered by quality trademark monitoring services provide a detailed record of the infringing uses, giving your company information which can help you construct an accurate cost-benefit analysis and determine whether the detrimental effects (lost revenue, dilution of brand, consumer confusion) of the infringing uses of your trademark outweigh the costs of litigation. And, this record of infringing uses could be useful if you became involved in litigation as well.