Maximizing Alt Legal Trademark ProtectionHow to Notify Clients of Potential Conflicts
Alt Legal Team | February 12, 2025
With trademark applications on the rise globally, it is more important than ever to continuously and vigilantly monitor your portfolio. Alt Legal Trademark Protection watches all of your USPTO and CIPO marks and identifies potential infringement for a competitive flat-fee, alerting you about:
- New applications for marks that have identical or nearly identical literal elements;
- Likelihood of confusion office actions that mention your marks; and
- Publications of any applications that were initially refused because of §2(d) likelihood of confusion.
Alt Legal Trademark Protection makes it easy to deliver a base-level of monitoring to your clients or business partners. The service provides highly-tailored reports that you can quickly scan, minimizing the amount of time you spend reviewing reports. You can deliver results to clients or business partners with plenty of time to develop an enforcement strategy and take action.
In this article, we’ll walk you through how to effectively communicate with clients or business partners when you’ve identified a potential conflict using Alt Legal Trademark Protection tools, including Trademark Application Match and §2(d) Trademark Watch.
Informing Your Clients or Business Partners About Trademark Monitoring
Many clients and business partners do not understand the purpose of trademark monitoring, so it is important to explain that even after a trademark application has been filed and registration has been secured, it is cruicial to monitor the mark for potential conflicts to avoid infringement, dilution, tarnishment, and other damaging issues.
In this communication, you can also discuss how often you intend to communicate your findings. You will be receiving frequent reports from Alt Legal Trademark Protection (weekly reports from Trademark Application Match and daily and weekly reports from §2(d) Trademark Watch), but we recommend sending monthly or quarterly reports to clients or business partners as to not overwhelm them. Of course, if you identify a particularly concerning application or a mark that has been published for opposition, you should notify the client or business partner right away, but in general, most clients and business partners will be satisfied with monthly or quarterly alerts. Communication is key: be sure to specify how often you will be reaching out, regardless of whether or not you’ve encountered any concerning applications. This will help you to set the expectation with your client or business partner.
Here is a sample email that you can send to your clients and business partners to let them know that you will be monitoring their trademarks and to describe the frequency with which you will share your findings:
Dear ___
Trademark monitoring and enforcement is something nobody wants to think about (or spend money on). But with the number of new trademark applications growing each year before the USPTO and CIPO, it’s important that trademark owners take proactive measures to monitor their valuable trademarks, even after the initial filing and registration.
Since you’re a valued client/business partner, I wanted to let you know that I will be monitoring your entire USPTO and CIPO portfolio for the most egregious conflicts.
I will provide monthly/quarterly reports summarizing all potential conflicts and recommended courses of action. You will receive the same monthly/quarterly report even if no potential conflicts have been identified. You may also receive intermittent communications if a particularly concerning matter has been identified or published for opposition.
Communicating Your Findings with Clients or Business Partners
When communicating your findings from Alt Legal Trademark Protection tools, including Trademark Application Match and §2(d) Trademark Watch, you want to ensure that you clearly set forth:
- The potential conflicting mark
- Your client’s/business partner’s mark at issue
- A brief explanation of the conflict
- A request to conduct further research
- A request to pursue the matter and set forth enforcement strategies
Here is some sample language that speaks to each of these points for conflicts identified with Trademark Application Match:
Dear ___
I received notice from our trademark monitoring provider of ABC company’s application to register the Mark X [serial/application number] in [the United States or Canada]. I think this may be of interest in view of your trademark rights in Mark Y [serial/application number] in [the United States or Canada].
The reason that Mark X is a concern is that it contains identical or significantly overlapping literal elements to Mark Y. This could give rise to infringement/dilution/tarnishment and/or other conflicts that could negatively impact your brand and trademark rights in Mark Y.
With your permission, I can conduct additional analysis into this potential risk and provide a report with options for proceeding.
Here is some sample language that speaks to each of these points for conflicts identified with §2(d) Trademark Watch:
Dear ___
I received notice from our trademark monitoring provider that ABC company is attempting to register the Mark X [serial/application number] in the US, and received an office action citing likelihood of confusion with your Mark Y [serial/application number] in the US.
I am attaching the notice from our trademark monitoring provider, the office action, and Mark Y as it appears in USPTO records. Additionally, I’m attaching some cursory internet research that I conducted into ABC company and Mark X to give you some background.
The reason that Mark X is a concern is that the examining attorney who is responsible for determining the registrability of Mark X has found that Mark X is likely to infringe upon your rights in Mark Y. At this point, it is the responsibility of ABC company to prove to the examining attorney that there is no likelihood of confusion between Mark X and Mark Y. If they don’t, their mark will not proceed through the registration process.
There are a number of steps that we can take at this time to protect your rights in Mark Y, including conducting additional research, filing a letter of protest, sending a cease and desist or other demand letter, and filing an opposition with TTAB if the application proceeds to publication.
With your permission, I can conduct additional analysis into this potential risk and provide a report with options for proceeding.
Communicating about Trademark Conflicts Leads to Stronger Relationships
Alt Legal Trademark Protection notifies you of infringing marks at the earliest stages in the trademark application process, giving you the ability to vigorously protect your clients’ and business partners’ trademark rights and adding value to the services you provide. Any time you can proactively reach out to a client or business partner about potential infringement, you have an excellent opportunity to strengthen the relationship. It shows your clients and business partners that you are paying attention to them, actively monitoring their valuable IP, and proactively developing strategies to overcome potential infringement.
Effective communication regarding potential trademark conflicts is key, so using the templates in this article and modifying them as you see fit for your organization or the particular client or business partner will help you make a stronger, more positive impact on your relationship.
If you would like us to set up custom email templates in Alt Legal to help make this notification process even easier and more streamlined, just reach out to the Alt Legal Support Team and they will be happy to assist.