As major watch industry events are fast approaching in 2025, it may be time for businesses to reevaluate or add to the tools at their disposal to protect and expand their watch-related brand. Whether a business plans on launching new products, like a new line of watches or brand accessories, or plans on strengthening existing business lines in 2025, this article provides some broad considerations that watch-related brands should take into account in the new year to help protect and enforce their intellectual property rights.
One form of intellectual property rights is source identifiers—commonly known as trademarks or trade dress. A trademark can be anything that a brand uses to identify itself as the source of its products or services, but typically includes word(s), phrases, designs, or logos. In the watch industry, companies use trademarks at multiple points of contact with consumers, including, but not limited to, on watch faces or dials, on product packaging such as watch boxes, in connection with online retail websites, and on watch accessories. “Trade dress” is also a source identifier, but it is typically used to denote unique, nonfunctional elements of a product’s packaging, shape, or design. For example, a company’s trade dress could include a unique watch box color that consumers associate with the brand. This article focuses on trademarks and provides three steps that watch brand owners can take to strengthen and secure their rights.
Conduct Trademark Clearance Searches for Any New Source Identifiers
Prior to launching a new watch brand or a line of products or services under an existing brand, a business should have a trademark clearance search conducted to determine:
- Whether the proposed trademark creates any conflicts with (i) pending trademark applications or (ii) trademark registrations that are currently registered with the United States Patent and Trademark Office (USPTO) or other applicable countries and
- Whether there are any other businesses currently using similar word or design trademarks for similar products or services, even if they are not registered with the USPTO
For a watch-related brand, a clearance search should be done prior to a company launch to confirm that its proposed trademark is available for use, to decrease the risk of potential infringement lawsuits. Where a watch brand is already established, clearance searches may also be conducted if the brand wants to launch new products under a sub-brand, or if the brand is expanding into a new product line, such as apparel, or a new service, such as educational or repair services. Even where a sub-brand is used along with a company’s main trademark, a clearance search should be conducted to decrease the risk of infringement.
While the depth of a clearance search ultimately depends upon a business’s budget, clearance searches commonly include reviewing:
- federal and state trademark registration databases (such as the USPTO database)
- trademark registration databases in foreign territories where your business is already operating or planning to expand and
- common law uses of the potential trademark, such as use in domain names and social media handles
Common law use refers to potential uses of a trademark that are not registered with the USPTO or a foreign country. To determine if anyone is making common law use of a similar trademark, clearance searches can evaluate social media use and domain name use to see if others are using similar trademarks.
Once a clearance search is conducted, determining if another business’s registered trademark or common law trademark poses a risk to your own proposed trademark requires legal analysis, as each situation is unique.
Register Applicable Source Identifiers Locally
If your watch business has decided to move forward with using a trademark, to put others on notice of your trademark rights, you should seek trademark registration with the USPTO. Registering a trademark with the USPTO may deter others from selecting or using similar trademarks for their watch-related goods and accessories and provides you with prima facie evidence of your trademark rights should you have to take legal action to enforce them.
You can file a trademark application with the USPTO either before or after a product launch. Filing before a product launch on an intent-to-use basis allows you to secure your place so that others do not swoop in, attempting to claim priority over the trademark before you get the chance to release your watch or accessory to consumers. If your business filed a trademark application on an intent-to-use basis and the application is approved by the USPTO, your business will need to submit a specimen showing the applied-for trademark being used in commerce in connection with your watches or accessories within a certain time period. If you have been using your trademark for years in connection with a watch brand, applying for federal trademark registration can assist with enforcement against bad actors in litigation, or on e-commerce platforms.
Seek Protection of Source Identifiers Globally
If your brand intends to expand globally, or if you already sell your watches and accessories in multiple countries, your business should consider seeking trademark registrations in foreign jurisdictions. Obtaining trademark registrations in foreign jurisdictions may assist with combating counterfeits and may prevent others from using similar trademarks in connection with watch-related products. To obtain trademark registrations in jurisdictions outside of the United States, you should consult with legal counsel to determine if your trademark use meets the requirements in a specific jurisdiction prior to seeking registration. As trademark rights are unique to specific countries or geographic regions, a trademark registration in the United States may not adequately protect your brand globally. Registering United States trademarks and foreign trademarks with customs and border protection authorities in relevant jurisdictions can assist enforcement and anti-counterfeiting efforts.
If you have questions relating to any of these issues, contact the authors of this article (Kristen Ruisi and Maria Sinatra) or any member of Venable's Trademark Group.