Our Second (Sort of) Secret Weapon: Time-of-Filing Trademark Watching Services


You might remember from Tore DeBella’s post that we just love letters of protest . They can delay or even avoid the need to file formal opposition proceedings in the United States Patent and Trademark Office. But wait — how do you learn about conflicting applications *before* they’re published for opposition purposes? Many watching services don’t notify you of conflicting applications until *after* the application has been published. That’s almost always too late to get your letter of protest granted.

Time to call your friendly neighborhood trademark watching service, to adjust the parameters of your watches! At least in the USA, trademark watching services can notify you very soon after a conflicting trademark application is *filed.* This has multiple benefits: you can file the letter of protest before the application is even examined, thus increasing the chances that your oh-so-persuasive evidence will make it into the examiner’s hands (and make the examiner’s job easier, too!). In addition, early warning of a conflicting application allows you and your client to determine whether a cease and desist letter should be sent right away, to help avoid the applicant’s getting committed to using the conflicting brand name. In our experience, U.S. time-of-filing watches cost the same as time-of-publication watches. It’s also worth looking into whether time-of-filing watches are available in other important markets. Many international Trademark Offices will accept pre-opposition “observations” akin to US letters of protest.

So while we’re ready and willing to handle oppositions when there’s no alternative, we much prefer relying on time-of-filing watches and letters of protest to keep those bothersome conflicting applications from progressing toward registration. It saves our clients time and money. What’s not to like?

This entry was posted in Letters of Protest, Watching Service.
Date Published: May 20, 2016
Jennifer L. Dean is a partner and vice-chair of the firm's Intellectual Property Practice Group, and the chair of Drinker Biddle's Trademarks practice team. The World Trademark Review 1000 survey has described Jennifer as the “smart, fast and practical” chair of a “proactive, extremely knowledgeable and timing-sensitive” group that provides “incomparably good” service. In addition, Managing Intellectual Property has repeatedly named Jennifer among the “Top 250 Women in IP,” and identified her as an “IP Star” on numerous occasions. Jennifer's practice encompasses trademark clearance, registration and enforcement, focusing in particular on brand selection and management, and on litigation before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. She manages global trademark portfolios in fields ranging from soft drinks to reinsurance, and also advises clients on copyright and licensing issues.