Table of Contents

1 Introduction 11 How to Fix These Mistakes

2 Protect Your Investment 13 How NameWatch Eliminates The 4 Mistakes

3 Simplify Monitoring, Minimize Mistakes 13 Mistake No. 1: Relying On Junk Reports
14 Mistake No. 2: Only Monitoring Crown Jewels
15 Mistake No. 3: Not Monitoring Competitors
4 The 4 Most Costly Trademark Watch Mistakes
16 Mistake No. 4: Relying Only on Human Review
5 1. Relying On Junk Reports
7 2. Only Watching ‘Crown Jewel Marks’
17 Simplify Your Watch Process (and Save)
8 3. Not Monitoring Competitors
9 4. Relying Solely on Human Review

i
Introduction
“I love watching trademarks...”
Said no one ever.
The reality? Most of us would rather watch grass grow than
sift through another hundred-page report.
Tedious, expensive, and time-consuming are all familiar
adjectives used by legal counsel to describe the trademark
watch process. Many have been led to ask themselves,
“shouldn’t technology be making our lives easier, not harder?”
Unfortunately, this has not always been the case. Especially
when it comes to managing an entire portfolio of trademarks
in an increasingly globalized economy (more on that in a
moment).
In this guide, we’ll reveal how you can begin making modern
technology work for you, instead of against you.
1
Protect Your Investment
Protecting your trademark is like coaching a football team—
you need both a strong offense and defense to win.
The offense begins with trademarking the name, slogan,
or logo that you want to represent your brand. It requires
selecting a trademark that will be both easily recognized
by customers and easy to protect from infringement (i.e.
distinctive enough so that it is unlikely to ever be declared too
generic).
Once you have registered your mark, the defense begins.
Typically, your defensive strategy will involve three ongoing
phases:
• Correctly using your mark
• Monitoring for potential infringements
• Taking action against those infringements
But trademark watching isn’t just about protection; it’s also
about business intelligence. By keeping an eye on the marks
competitors are filing, you can better strategize for the future.
Over the past decade, our world has experienced an
unprecedented leap in technological innovation. As Google
CEO Eric Schmidt likes to remind us: Every two days we
now create as much information as we did from the dawn of
civilization until 2003.
Look no further for evidence than the gadgets we depend
on daily: Smartphones, tablets, and laptops with an Internet
connection have forever changed the way we do business.
As global demand for products and services continues to
increase, more and more companies will continue to ship
across borders.
Thus, the potential for trademark infringement is now greater
than ever before.
2
Simplify Monitoring, Minimize Mistakes

The key to minimizing costly mistakes in defending your

trademark is simplifying the trademark monitoring process
and getting more out of it.

THE BAD NEWS? Your company is most likely making the

mistakes we are about to discuss.

THE GOOD NEWS? Your competitors are also making these

mistakes.

Once you’ve finished reading, you will know how to streamline

your strategy and gain an edge on competitors.

2
The 4 Most
Costly Trademark
Watch Mistakes
1. Relying On Junk Reports

Are you still sifting through 100-page watch reports?

Most trademark monitoring reports are generated via legacy

service providers. These providers require set parameters
(with wildcards) for their watch reports. Rather than operate
on an algorithm that accounts for similarity, like NameWatch
does, these legacy systems operate solely on parameters you
set. This means you not only get a lot of irrelevant noise, but
you also miss relevant items because you didn’t think or know
to consider them when setting the parameters.

And to make matters worse, they aren’t organized in any

particular order. Thus, your legal counsel must read through
an entire report—90 percent of which likely contains
irrelevant junk material—to find maybe one or two threats.

What you really want is a report that goes beyond simple

phonetical matching. It should give less weight to similar
marks within the same class that are nevertheless different
products.

5
1. Relying On Junk Reports

For example, both computer software and security alarms

are in Class 9, but are not related. If you are a security alarm
manufacturer who identifies a slightly similar name being
used by a software company, there is probably not enough
potential for confusion to oppose.

Ex. ZIP IT (software) vs. ZAP (security alarms)

Unfortunately, the inclusion of such questionably relevant

similarities is typical of routine monitoring reports. Obviously,
sifting through 50 to 100 pages of material per mark is not an
efficient use of time for in-house counsel. Which brings us to
our next issue:

6
2. Only Watching ‘Crown Jewel Marks’

From a cost standpoint, outsourcing extraneous sifting to
outside counsel is also out of the question. After all, paying
for the computer generated reports themselves is already an
astronomical expense.
Case In Point: One of our Fortune-500 clients owns 5,000+
trademarks.
When we initially spoke with them about their trademark
protection strategy, we were shocked—they only monitored
20 of their 5,000+ trademarks.
As we continued to work with other companies of similar
stature, we were continually surprised to learn the majority
resorted to monitoring “crown jewels” and ignoring the
rest. Unfortunately, such a strategy only works until a “less
important” mark suddenly becomes important!
Basically, it’s a gamble: Avoid paying HUGE watch fees now
and hope you don’t lose profits later. But ask yourself, is that
really how you want to conduct business?

The reason? The cost of watching one global brand was

$1,500.

If they were to monitor all of their brands in the same

manner, the cost would be millions of dollars.

7
3. Not Monitoring Competitors
Another common trademark protection mistake is failing to
monitor competitor registration activity.
• What new brands are they working on right now?
• Which products have yet to be released to the public?
• What are you doing to stay ahead of the curve?
In today’s global market, it is not uncommon for large brands
to expand into unexpected industries. Of course, product
cross-over is nothing new.
Car manufacturer Peugeot manufactured coffee grinders and
pepper makers in 1810, long before they began selling cars.
Similarly, computer giant Apple recently announced a foray
into the automobile industry.
Imagine how powerful it would be for their competitors to
know about their plans before they were ever announced to
the public.
Knowing what the competition is going to do before they
actually do it, allows companies to strategize more effectively
moving forward.
One of the easiest ways to obtain such knowledge is to
monitor competitor trademark applications. Unfortunately,
many companies avoid taking this extra step due to time and
financial constraints.
8
4. Relying Solely on Human Review

As mentioned before, traditional watch reports can run more

than 100 pages per trademark, and each one of those pages
has multiple trademarks for someone to review. Since most
of those trademarks are irrelevant, it’s very difficult to stay
focused page after page, looking for a needle in the proverbial
haystack.

Humans have something called selective attention, which

kicks in when the brain labels information mundane or
unimportant. One obvious way selective attention manifests
is when reading a book. You can read the same page multiple
times only to realize at the end of the page you haven’t been
paying attention. While you were reading, your brain decided
that something else was more important to think about, and
your mind wondered. You really did read every word, but you
didn’t retain any of it.

You do the same thing when watching a movie or listening

to a lecture. It’s possible to hear every word, but not retain
any information. That is, until something jolts your mind
back to the lecture, like realizing the speaker just asked you a
question.

9
4. Relying Solely on Human Review

How does this happen when doing important work like

reviewing watch reports? Simple, humans are busy.

We have bills to pay, families to attend to, and leaky faucets

that don’t fix themselves. In other words, on page 65 of a
100-page report filled with a lot of irrelevant junk, missing
the needle in the haystack isn’t a far-fetched idea. In fact, it
happens quite often.

Relying solely on human review for watch reports is a mistake

most companies never realize. That is, until something is
missed. Then, it’s the person that receives the blame, not the
faulty process.

10
How to Fix These
Mistakes
How to Fix These Mistakes

As previously mentioned, the key to eliminating these costly

mistakes is simplifying the trademark monitoring process. The
easiest way to do that?

NameWatch—the world’s first technology-assisted watch

software.

The program employs a complex algorithm designed to extract

(and organize) all of the information you need to monitor all of
your trademarks in one place.

With NameWatch you get:

• Unlimited trademark watching,

• Customizable alerts (only be notified of highly similar
marks).
• An organized dashboard that allows monitoring of
thousands of marks (supporting fiduciary responsibility).

If you are the one typically sifting through those hefty reports,
you may be skeptical.: Cost concerns aside, who actually has
time to monitor an entire portfolio?

The companies who use NameWatch, that’s who.

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How NameWatch Eliminates The 4 Mistakes

Mistake No. 1: Relying On Junk Reports

The program delivers fully ranked and relevant watch reports

according to your specifications. Not only will you no longer
have to pay legacy providers for expensive, disorganized
reports, you can now monitor your entire portfolio at a
glance—for one flat fee.

Yep, that’s right: You can now watch your ENTIRE

PORTFOLIO for the amount it would traditionally cost to
build a report for a few marks.

13
How NameWatch Eliminates The 4 Mistakes
Mistake No. 2: Only Monitoring Crown
Jewels
One of NameWatch’s most innovative features is its organized
dashboard. Instead of having to sift through dozens of
results per mark, you can now easily monitor multiple marks
simultaneously.
Translation: Only receive alerts when relevant similarities
are identified.
The cool part?
You can specify the percentage similarity requirements for
your notifications using our Likelihood of Confusion feature.
We recommend cutting off results with less than a 50
percent similarity.
Once you begin receiving relevant and ranked reports, you
will be surprised at how much time you now have. You may
even find yourself monitoring all of your marks (no, we’re not
kidding).
How is that possible?
Consider this story:
One of our clients received watch reports 80 pages long,
consisting of multiple trademarks per page. As you can
imagine, reviewing all of that information was tedious and
monotonous. The vast majority of the results were junk,
meaning they weren’t relevant or closely related enough to
require action.
This client applied their search to NameWatch and received a
return of only three marks to potentially take action against.
From 80 pages to only three marks—imagine the time
savings!
After manually reviewing and comparing their previous report
to ours, out of all 80 pages, they flagged only three marks
they would have considered taking action against... the same 3
marks from the NameWatch report.
14
How NameWatch Eliminates The 4 Mistakes

Mistake No. 3: Not Monitoring Competitors

Expand the scope of your watch beyond your portfolio to

include applications, brand names, and product categories.
The program’s Competitor Watch feature will alert you in real
time of any marks filed within your saved search parameters.

Track the entire application process while specifying product

and name categories.

15
How NameWatch Eliminates The 4 Mistakes

Mistake No. 4: Relying Only on Human

Review

There is no way to replace the importance of manually

reviewing watch reports. However, there is a technological
way to filter out irrelevant returns, reducing manual reviews
to relevant matches only.

There is a significant benefit of using intelligent technology,

to filter out irrelevant returns. Rather than forcing people to
battle attention bias through 80 pages of irrelevant returns,
they instead focus their time and attention on the returns that
really matter.

Technology, like TrademarkNow’s NameWatch, doesn’t

replace the human aspect of trademark review. Instead, it
enhances it, removing the common causes of human error and
allowing manpower to be spent on the tasks that matter.

16
 Simplify Your Watch Process (and Save)

In an increasingly complex marketplace where new businesses

are popping up all the time, protecting intellectual property from
infringement has never been more important.

Considering recent legislation in Mexico and Poland, such negligence

will become increasingly risky in the years to come. Both countries
used to provide a semblance of protection, rejecting applications for
new trademarks that were closely related to yours. Not, the burden
of watching is on the trademark owners, meaning, if you don’t react to
applications yourself, no one else will. It is now essential to watch all
of your marks in these countries, and other regions are likely to follow
suit.

As we have shown, time-consuming, expensive, and ineffective

monitoring systems are now optional. Streamlining your process is
simply a matter of having the right tools in place.

With NameWatch, legal counsel can now monitor more marks in less
time for less money. But don’t take our word for it—

see how NameWatch works for yourself